Ex Parte Wolf et al

Patent Trial and Appeal Board

Sep 2, 2016

12499417 (P.T.A.B. Sep. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/499,417 07/08/2009
123223 7590 09/07/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Aurel ti Wolf
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
074023-0271-US-28681 l 1249
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
09/07/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AUREL WOLF, LESLAW MLECZKO, STEPHAN SCHUBERT,
and OLIVER FELIX-KARL SCHLUTER
Appeal2015-004821
Application 12/499,417
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision finally rejecting claims 1, 5, 10, 12, 13, 15, 18, 20, 22,
26, 27, 29-31, and 35 under 35 U.S.C. § 103(a).2 We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
The Examiner also rejected the claims on the grounds of nonstatutory
obviousness-type double patenting based on claims 1-22 of Application
1 The real party in interest is stated to be Bayer MaterialScience AG. (Br.
2).
2 On appeal, the Examiner has withdrawn the rejections of: (i) the claims
under 35 U.S.C. § 112, first paragraph; and (ii) claim 10 under 35 U.S.C.
§ 112, fourth paragraph. Ans. 11; see also Final Act. 3-5.
Appeal2015-004821
Application 12/499,417
12/668,972, which was abandoned in ivfay 9, 2014. Accordingly, this
rejection is moot.
We AFFIRM.
Claim 1 is illustrative of the appealed subject matter (pagination
added; emphasis added to highlight key limitations):
1. A process comprising reacting hydrogen chloride and
oxygen on 3 to 8 catalyst beds connected in series with
each other,
wherein the reaction of the hydrogen chloride and the
oxygen on the 3 to 8 catalyst beds connected in series with
each other is carried out under adiabatic conditions,
wherein the 3 to 8 catalyst beds connected in series
with each other are adiabatically isolated from each other,
wherein no means for removing heat is provided in the
catalyst beds,
wherein at least one heat exchanger is located
downstream of each of the catalyst beds and
vvherein hydrogen chloride and oxygen are present in a
gas stream and hydrogen chloride is metered into the gas
stream upstream of one or more of the catalyst beds
following the first catalyst bed.
(Br. 10, Claims App.)
The Examiner maintains, and Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
(a) Claims 1, 5, 10, 12, 13, 15, 18, 20, 22, 26, 27, 29-31, and 35 are
rejected as unpatentable over Olbert et al. (WO 2005/063616 Al, published
July 14, 2005) (relying on US 2008/0233043 Al, published Sept. 25, 2008,
as the unofficial English translation) (hereinafter "Olbert") in view of
Iaccino et al. (US 2008/0047872 Al, published Feb. 28, 2008) (hereinafter
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Application 12/499,417
"Iaccino"), optionally further in view of Johnston et al. (US 2002/0018739
Al, published Feb. 14, 2002) (hereinafter "Johnston");
(b) Claims 1, 5, 10, 12, 13, 15, 18, 20, 22, 26, 27, 29-31, and 35 are
rejected as unpatentable over Olbert in view of Johnston. 3
Appellants' arguments urging reversal of the rejections of claims 5,
10, 12, 13, 15, 18, 20, 22, 26, 27, 29-31, and 35 focus on limitations
common to independent claim 1 (Br. 5-9). In the absence of arguments
specific to their patentability, dependent claims 5, 10, 12, 13, 15, 18, 20, 22,
26, 2 7, 29-31, and 3 5 stand or fall with claim 1. 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
ANALYSIS
Upon consideration of the evidence and each of Appellants'
contentions, we find that the preponderance of evidence on this record
supports the Examiner's conclusion that independent claim 1 and all of its
dependent claims are unpatentable over the applied prior art. Appellants
have failed to show that the Examiner erred reversibly. We sustain the
Examiner's§ 103 rejections, as listed in (a) and (b) above, of all the
appealed claims for essentially the reasons set out by the Examiner in the
Final Office Action and the Answer.
We add the following primarily for emphasis.
3-The Examiner rejected "[c]laims 1, 5, 10, 12-13, 15, 18-20, 22, 24, 26-
27, 29-31, 35 (all pending claims) . ... "(Final Act. 10 (emphasis added)).
There is, however, no dispute that the pending claims are 1, 5, 10, 12, 13, 15,
18, 20, 22, 26, 27, 29-31, and 35 (Final Act. 1; Br. 2). Appellants canceled
claims 19 and 24 in an amendment filed Nov. 4, 2013, which were entered
by the Examiner on Feb. 25, 2014. Accordingly, the Examiner's rejection
(b) of claims 19 and 24 is not before us.
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Appeal2015-004821
Application 12/499,417
Rejection (a)
The Examiner finds that Olbert's disclosure of a process for preparing
chlorine by catalytic oxidation of hydrogen chloride (Final Act. 5-8)
discloses all the limitations of claim 1 except Olbert "does not disclose that
when the process is carried out adiabatically, more than one catalyst bed is
used" (id. at 6). The Examiner finds, however, that Iaccino teaches that "for
an exothermic reaction, the reaction may be carried out in multiple catalyst
beds with heat removal between beds, i.e.[,] adiabatically" (id.). The
Examiner determines that it would have been obvious for the ordinary
skilled artisan to add hydrogen chloride and oxygen to each of the reactors in
order to limit the amount of heat generated to efficiently prevent hot spots
(id. at 9).
Appellants' main argument is that Olbert teaches away from the
present invention because Olbert teaches that the oxygen "'can either be
added together with the hydrogen chloride upstream of the first reactor or its
addition can be distributed over the various reactors"' (Br. 6 (citing Olbert
i-f 13)). According to Appellants, this metering of oxygen, rather than
metering of hydrogen chloride as claimed, is detrimental because "oxygen
excess is increased and the probability for getting a hot spot increases due to
[a] higher reaction rate" (Br. 7).
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). For a
reference to "teach away," it must criticize, discredit, or otherwise
discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
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Appeal2015-004821
Application 12/499,417
Appellants' arguments are not persuasive because they fail to identify
any teaching in the applied prior art that criticizes, discredits, or discourages
the metering of hydrogen chloride into the gas stream upstream of one or
more catalyst beds following a first catalyst bed as claimed. Furthermore,
Appellants' unsupported conclusion that Olbert's process would not function
properly (if combined with Iaccino's adiabatic multiple catalyst beds) falls
short of showing error. An attorney's arguments in a brief cannot take the
place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Therefore, we are not persuaded by Appellants' arguments that Olbert
teaches away from claim 1.
Appellants assert that Iaccino' s teachings concerning adiabatic
multiple catalyst beds are limited only to the specific hydrogen rejection
reactions, stoichiometric proportions and conversion levels greater than the
90% disclosed (Br. 7 (citing Iaccino i-fi-195, 97, and 98)). Therefore,
according to Appellants, "the references fail to disclose or even suggest
every element of the claimed invention .... " (Br. 8).
Appellants' arguments are not persuasive because they do not fully
address the inferences of the references that are presented on this record for
our review. As set forth above and in the Final Office Action, the Examiner
supports his prima facie case of obviousness based on the combined
teachings of Olbert and Iaccino (and optionally Johnston) (Final Act. 5-9).
Appellants' arguments, however, fail to consider this prior art as a whole,
and do not directly address the Examiner's position (e.g., id.). See, e.g., In
re Preda, 401F.2d825, 826 (CCPA 1968) (it is well established that in
evaluating references it is proper to take into account not only the specific
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Application 12/499,417
teachings of the references but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom).
Appellants have not sufficiently refuted and thus have not shown
reversible error in the Examiner's determination that it would have been
prima facie obvious to combine the known method to carry out Olbert's
process for preparing chlorine by catalytic oxidation of hydrogen chloride
using multiple beds with heat removal between beds, as suggested by
Iaccino, so that the temperature of the beds can vary to maximize both the
kinetic rates and the thermodynamic conversion of the exothermic process
(e.g., Final Act. 9).
Appellants have also not provided persuasive technical rationale or
evidence that demonstrates reversible error in the Examiner's determination
that it would have been prima facie obvious to combine Olbert's and
Iaccino's teachings (e.g., Final Act. 9), in order to achieve, with the use of
no more than ordinary creativity, the known desirable results of maintaining
temperatures of catalyst beds within a desired range and achieving benefits
of the use of multiple beds, which outweigh their cost (generally Final Act.;
Ans.; Br.). See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A
person of ordinary skill is also a person of ordinary creativity, not an
automaton."). Therefore, Appellants' argument that the prior art is
concerned only with the implementation of adiabatic conditions in specific
hydrogen rejection reactions, with stoichiometric proportions or conversion
levels greater than the 90% is unpersuasive because the record evidence
provides that it was known to the ordinary skilled artisan that an industrial
problem in the oxidation of hydrogen chloride to chlorine is the formation of
hot spots (see Ans. 6 (citing Olbert i-f 5)).
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Thus, we affirm the rejection of claims 1, 5, 10, 12, 13, 15, 18, 20, 22,
26, 27, 29-31, and 35.
Rejection (b)
As set forth above, the Examiner relies on Olbert for suggesting all
the limitations of claim 1, with the exception that Olbert is silent as to an
adiabatic process using multiple catalyst beds. The Examiner finds Johnston
teaches "'that stagewise addition of a reactant may be simply achieved by
distributing the reactant via successive [printed circuit heat exchange type,
i.e.,] PCHE panels preceding each reaction compartment'" (Final Act. 12
(citing Johnston i-f 34)). The Examiner determines, therefore, that it would
have been obvious to the ordinary skilled artisan to optimize the "'stagewise
addition"' of a reactant, such as hydrogen chloride in Olbert's process, in
order to obtain the desired temperature profile (Final Act. 12 (citing
Johnston i-f 34)).
Appellants' main arguments are that one skilled in the art: ( l) would
consider a hydrochloric gas phase oxidation process as uncontrollable and
would refrain from choosing an adiabatic process as taught by Johnston (Br.
9) and (2) would not be motivated to implement Johnston's process because
hot spot formation is an inherent part of an adiabatic operation and cannot be
avoided (id.). Appellants' arguments, however, are not persuasive because
the record evidence provides that adiabatic multistage reactors with
interstage heat transfer for cooling and interstage gas feeds were well known
in the art (Ans. 16-17 (citing Johnson i-f 80 (teaching "heat exchangers to be
used ... to avoid hotspots"); ULLMANN'S ENCYCLOPEDIA OF INDUSTRIAL
CHEMISTRY, Vol. B4, 1992, pp. 199-238)).
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Thus, we affirm the rejection of claims 1, 5, 10, 12, 13, 15, 18, 20, 22,
26, 27, 29-31, and 35.
DECISION
The Examiner's§ 103 rejections are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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