Bertrand Guichard et al.

Patent Trials and Appeals Board

Dec 1, 2021

2021000578 (P.T.A.B. Dec. 1, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/005,936 12/03/2013 Bertrand Guichard PET-2897 3823
23599 7590 12/01/2021
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
QIAN, YUN
ART UNIT PAPER NUMBER
1738
NOTIFICATION DATE DELIVERY MODE
12/01/2021 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BERTRAND GUICHARD, LAURENT SIMON, VALENTINA
DE GRANDI, DELPHINE MINOUX, and JEAN-PIERRE DATH
____________

Appeal 2021-000578
Application 14/005,936
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, GEORGIANNA W. BRADEN, and
JANE E. INGLESE, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 5, 6, 8, and 9. Appeal Br. 2. Appellant
previously appealed the Examiner’s rejection of pending claims 1, 2, 5, 6, 8,
and 9, and the rejection was affirmed. See Appeal Br.; DECISION ON

1 This Decision includes citations to the following documents:
Specification filed September 18, 2013 (“Spec.”); Final Office Action dated
February 26, 2020 (“Final Act.”); Appeal Brief filed July 27, 2020 (“Appeal
Br.”); Examiner’s Answer dated September 4, 2020 (“Ans.”); and Reply
Brief filed October 29, 2020 (“Reply Br.”).
2 We use the term “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies IFP Energies nouvelles as the real parties
in interest. Appeal Br. 1.
Appeal 2021-000578
Application 14/005,936

2
APPEAL (Appeal 2018-004750) dated February 28, 2019 (“Prior
Decision”). We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant states that the invention relates to a catalyst for
hydrotreatment of hydrocarbon cuts. Spec. 1, ll. 4–15.
Claim 1, the only independent claim on appeal, is representative and
reproduced below from the Claims Appendix to the Appeal Brief (with
emphasis showing added language relative to claim 1 as addressed in the
Prior Decision):
1. A catalyst comprising an amorphous support based on
alumina, at least one Cl–C4 dialkyl succinate, citric acid,
phosphorus, acetic acid and a hydrodehydrogenating function
comprising at least one element from group VIB and at least
one element from group VIII of the Periodic Table, with the
Raman spectrum of the catalyst comprising a band at 896 cm-1,
characteristic of acetic acid and comprising bands at 990 cm-1,
at 974 cm-1 or at both 990 cm-1 and 974 cm-1, characteristic of at
least one Keggin heteropolyanion,[3] the characteristic bands of
said succinate and the principal characteristic bands of citric
acid.
Appeal Br. 23, Claims App’x.

EXAMINER’S REJECTION
The Examiner rejected claims 1, 2, 5, 6, 8, and 9 under 35 U.S.C.
§ 103 as obvious over Jansen et al. (WO 2005/035691 A1, published on

3 The Specification describes a Keggin heteropolyanion as having the
formula PXY11O40x- and/or PY12O40x-, where Y is a metal from group VIB
and X is a metal from group VIII. Spec. 5, ll. 8–10.
Appeal 2021-000578
Application 14/005,936

3
April 21, 2005, “Jansen”) and Cholley et al. (US 2008/0194892 A1,
published on August 14, 2008, “Cholley”). Final Act. 3–5.

OPINION
Appellant presents separate arguments with respect to claims 1, 5, 8,
and 9. See Appeal Br. 2. We select claim 1 as representative for disposition
of the Examiner’s rejection, and address the other claims to the extent
necessary. 37 C.F.R. § 41.37(c)(1)(iv)(2019).

The Examiner’s Rejection
As discussed above, the Examiner’s rejection of the claims, which
was over the same combination of prior art, was previously affirmed. As
indicated above, claim 1 was subsequently amended to recite the presence of
acetic acid and that the Raman spectrum of the catalyst includes a band
characteristic of acetic acid. Accordingly, we focus our attention on the
impact of these additional recitations on the Examiner’s obviousness
rejection with respect to the evidence of record.
In this regard, the Examiner found, inter alia, Jansen discloses a
catalyst that contains organic acid, where suitable organic acids include
acetic acid and citric acid. Final Act. 3. The Examiner found Jansen does
not specifically disclose a combined organic acid of both citric acid and
acetic acid, but determined that it would have been obvious to have
combined citric acid with acetic acid, because each is known to be useful for
the same purpose. Id. at 4, citing In re Kerkhoven, 626 F.2d 846, 850
(CCPA 1980). The Examiner determined that as a result of the combination,
Appeal 2021-000578
Application 14/005,936

4
the characteristic band of acetic acid in the Raman spectrum recited in claim
1 would necessarily be present. Id. at 4–5.
As in the rejection previously appealed, the Examiner relied on Jansen
for disclosing a hydrotreating catalyst containing cobalt and molybdenum
oxides supported on alumina comprising P2O5, citric acid, and an organic
compound comprising at least two oxygen-containing moieties. Final
Act. 3. The Examiner relied on Cholley for disclosing a hydroprocessing
catalyst comprising C1–C4 dialkyl succinate, preferably dimethyl succinate.
Id. at 4. The Examiner determined that it would have been obvious to have
combined the C1–C4 dialkyl succinate in Cholley with Jansen’s catalyst
because Cholley discloses that the C1–C4 dialkyl succinate increases the
effectiveness of the catalyst and reduces the reaction temperature by 5–20
°C. Id., citing Cholley ¶ 12.
The Examiner determined that because the combination of Jansen and
Cholley discloses all of the claimed reagents, composition, and method of
making the catalysts, the physical properties of the resulting composition
including Raman spectrum bands with the Keggin heteropolyanion,
succinate, acetic acid, and citric acid characteristics recited in claim 1 would
necessarily follow. Final Act. 4–5.

Appellant’s Arguments
Appellant argues Jansen does not direct one of ordinary skill in the art
to a catalyst containing both citric acid and acetic acid. Appeal Br. 4.
Appellant contends that Jansen does not disclose acetic acid as a preferred
acid, and Jansen has no teachings of using two different acids together in
one catalyst. Id. Appellant argues that Cholley also discloses organic acids,
Appeal 2021-000578
Application 14/005,936

5
but like Jansen, Cholley prefers acids other than acetic acid and does not
disclose combinations of acids. Id. As a result, Appellant contends that
even if Jansen and Cholley were combined, the combination of acids recited
in claim 1 would not have been suggested and the Examiner has improperly
applied a per se case of obviousness in rejecting claim 1. Id. 4, 6–7.
Appellant contends also that because of the additional recitation of acetic
acid, the current claims are distinct from those previously appealed such that
the argument against the Examiner’s position that the physical properties
recited in claim 1 would be a natural result of the combination of prior art is
much stronger. Id. at 8.
Appellant argues that data in the Specification and in the Declaration
of Jean-Pierre Burzynski (Declaration under 37 C.F.R. § 1.132 dated
March 10, 2017, “Burzynski Declaration”) show surprising results and
unexpected advantages of the claimed catalyst. Appeal Br. 6, 12–17.

Discussion
We have considered all Appellant’s arguments and are not persuaded
that the Examiner reversibly erred in rejecting the claims for the reasons set
forth by the Examiner. We add the following for emphasis.
As to Appellant’s argument that neither Jansen nor Cholley discloses
or suggests combinations of acids including citric acid and acetic acid,
Jansen discloses the presence of an organic acid, where acetic acid and citric
acid are specifically named, and citric acid is particularly preferred. Jansen,
9, l. 26 –10, l. 6. Cholley discloses the presence of “at least one acid”
including both acetic acid and citric acid, where citric acid is listed as a
“particularly preferred acid.” Cholley, ¶ 29. Thus, both Jansen and Cholley
Appeal 2021-000578
Application 14/005,936

6
disclose acetic acid and citric acid are suitable acids, and contrary to
Appellant’s argument (Appeal Br. 4–5), Cholley suggests the use of more
than one acid.
Appellant’s argument that the Examiner’s rationale for combining
acetic acid and citric acid is insufficient because there is no teaching in
Jansen that combining these acids would lead to any improvement in
catalytic performance is not consistent with controlling case law. That is, as
discussed above, the Examiner did not rely on the position that combining
acids would lead to catalytic improvement, but rather that such a
combination of acids, each of which is expressly disclosed in the prior art,
would be useful for the same purpose. Kerkhoven, 626 F.2d at 850. As a
result, Appellant’s argument is not persuasive.
In addition, we are not persuaded by Appellant’s argument that at
best, Jansen would have suggested combining acids from the preferred list,
which would not include acetic acid. Appeal Br. 7. Similar to the above
argument, Appellant’s argument is not consistent with controlling case law,
where it is well settled that a reference is not limited to the disclosed
preferred embodiments. See Merck & Co., Inc. v. Biocraft Laboratories,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). In view of the above discussion,
the Examiner provided a sufficient explanation as to why a catalyst having
the components recited in claim 1, in particular a combination of citric acid
and acetic acid, would have been obvious over Jansen and Cholley.
Furthermore, we are not persuaded by Appellant’s arguments that the
Examiner improperly determined that a Keggin heteropolyanion structure
having the bands in the Raman spectrum recited in claim 1 would have been
the natural result of the combination. In this regard, although Appellant
Appeal 2021-000578
Application 14/005,936

7
points to various sections of the MPEP, a non-precedential Board decision,
and certain Federal Circuit decisions (Appeal Br. 9–12), we do not view
such citations to be controlling in view of the facts of this case. That is,
Appellant’s arguments focus on the proposition that in order for inherency to
be present, the prior art must disclose specific embodiments encompassing
all of the claimed components. Appeal Br. 9.
In the obviousness context, however, inherency renders a claimed
limitation obvious if the limitation is “necessarily present,” or is “the natural
result of the combination of elements explicitly disclosed by the prior art.”
Persion Pharm. LLC v. Alvogen Malta Operations Ltd., 945 F.3d 1184,
1191 (Fed. Cir. 2019) (quoting PAR Pharm., Inc. v. TWI Pharm., Inc., 773
F.3d 1186, 1195–96 (Fed. Cir. 2014)). Thus, we are of the view Appellant
has incorrectly represented the law of inherency in the obviousness context,
as Persion and PAR make clear that a combination of elements disclosed by
the prior art may be sufficient to rely on inherency, as long as the claimed
limitation is a natural result of the combination. The case law cited by
Appellant is not inconsistent with this proposition as discussed below.
We point out that Metabolite Lab. Inc. v. Lab. Corp. of Am. Holdings
involves the anticipation of species where the prior art discloses a genus.
370 F.3d 1354, 1367 (Fed. Cir. 2004). Thus, Metabolite is not relevant to
the issue of whether a combination of prior art in the obviousness context
can be relied on to establish inherency. Furthermore, Appellant’s discussion
of the non-precedential Board decision in Ex Parte Vigano is not persuasive,
at least because in contrast to the representations made by Appellant, the
Examiner did not rely on the combination of the two prior art references,
Allermann and Farley for the inherency of the die shrinkage property at
Appeal 2021-000578
Application 14/005,936

8
issue, but rather relied only on Allermann for that property. See Appeal
Br. 9; Ex Parte Vigano, Appeal No. 2010-007666 at 5 (PTAB Jan. 3, 2012)
(citing Examiner’s Answer entered January 19, 2010 6). Additionally, as to
In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993), cited by Appellant (Appeal Br.
10), in that case, the Federal Circuit stated that the matching of signal time
to recording time was an “optimal” property, and not necessarily inherent.
9 F.3d at 1533–34.
Here, we are of the view that the Examiner has provided sufficient
reasoning to establish that it would have been obvious to combine all of the
required components in claim 1, and as such, the Examiner has provided
sufficient evidence that the Keggin heteropolyanion structure with the
recited Raman spectrum bands would have been a natural result of the
combination. We observe that despite Appellant’s characterization of the
claimed components as a “very specific combination of components”
(Appeal Br. 9), claim 1 only generally recites a C1-C4 dialkyl succinate, at
least one element from group VIB, and at least one element from group VIII
of the periodic table.
In this regard, we do not view the comparative evidence provided by
Appellant to be sufficient to establish that either the claimed Keggin
heteropolyanion structure would not inherently result or that the claimed
catalyst exhibits surprising and unexpected results commensurate in scope
with the claims. Although we focus our discussion on the impact of the
additional recitation of acetic acid in claim 1, it should be understood that in
doing so, we not only consider this additional aspect in claim 1, but the
overall weight of all the results presented in both the Specification and
Appeal 2021-000578
Application 14/005,936

9
Burzynski Declaration in conjunction with the evidence in the prior art in
favor of the Examiner’s rejection.
Appellant points to evidence previously of record, specifically,
examples in the Specification, which compare catalysts containing cobalt,
molybdenum, and phosphorus without citric acid and dimethyl succinate
(Catalysts B1 and B2) to catalysts containing cobalt, molybdenum, and
phosphorus with citric acid (and acetic acid) and dimethyl succinate
according to the invention (Catalysts C1, C2, C1bis, C2bis), and examples in
the Burzynski Declaration, which compare a catalyst according to the
invention (Catalyst D2) including cobalt, molybdenum, and phosphorus,
citric acid, acetic acid, and dimethyl succinate with a catalyst according to
Jansen (Catalyst E2) including cobalt, molybdenum, and phosphorus, citric
acid, and polyethylene glycol. Spec. 28–29, Table 1; Burzynski Decl. 2–4.
The Examiner determined that the results were not commensurate in
scope with the claims because the results from the examples in the
Specification as shown in Table 1 include only one specific phosphorus
precursor, one amorphous support, one molybdenum compound as the
Group VIB compound and one cobalt compound as the Group VIII
compound. Ans. 8–9. Regarding the presence of acetic acid and the effect
on catalytic activity, the Examiner observed that with additional acetic acid,
the catalytic activity was “slightly higher” (119%, 120%) than when citric
acid was the only acid (116%), and the total amount of acids used in the
examples containing both acetic acid and citric acid was more than twice the
amount of acid when citric acid was used as the only acid. Ans. 9.
Appellant responds that the data is reasonably representative of the
claim scope and the Examiner’s position with respect to the total amount of
Appeal 2021-000578
Application 14/005,936

10
acid does not consider all the data, which is relied on to show the advantage
of using acids. Reply Br. 4.
Weighing all the evidence as a whole, we agree with the Examiner
that the comparative evidence presented by Appellant is insufficient to
outweigh the evidence in favor of obviousness. We are not persuaded that
the comparative evidence is sufficient to show the advantage of acids, and in
particular, the advantage of the combination of acetic acid and citric acid
over other acids.
As discussed above, both Jansen and Cholley disclose the use of acids
in conjunction with the catalysts disclosed therein.4 We observe that the
comparative examples in the Specification do not compare similar amounts
of acid when citric acid is used alone versus when both acetic acid and citric
acid are used. Spec. 28–29, Table 1. The comparative examples “in
accordance” (with the invention) also all contain both acid and dimethyl
succinate, and there are no comparative examples containing only acetic
acid. Id. Thus, it is not possible to determine the effect of the amounts of
acid, acid alone, or the effect of acetic acid versus citric acid in order to
determine whether there is an unexpected effect on catalytic activity when
both acetic acid and citric acid are used. Weighing this lack of comparative
evidence against the disclosures of suitable acids provided in Jansen and
Cholley, the evidence presented by Appellant regarding particular acids in

4 In this regard, Appellant’s argument with respect to Leo Pharmaceutical
Products, Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) is not
persuasive. Appeal Br. 17–18. Appellant identifies the unrecognized
problem as providing a catalyst for increased activity in hydrotreatment. Id.
at 17. Both Jansen (p. 3, ll. 1–28) and Cholley (¶¶ 11, 12) are also directed
to solving this problem. Thus, the problem is not unrecognized.
Appeal 2021-000578
Application 14/005,936

11
claim 1, citric acid and acetic acid, is insufficient to demonstrate surprising
or unexpected results.
We are also not persuaded by Appellant’s position that the Burzynski
Declaration demonstrates that Jansen’s catalyst does not exhibit
advantageous catalytic activity and that the Keggin heteropolyanion
structure would not form. Appeal Br. 14. As discussed above, the Examiner
takes the position that the formation of the Keggin heteropolyanion occurs as
a natural result of the combination of the prior art. Cholley expressly
discloses, in a similar catalyst system, the presence of dimethyl succinate as
a preferred compound to increase catalyst activity. See Cholley ¶¶ 12, 17.
In addition, there is insufficient evidence to determine whether the
combination of acetic acid and citric acid now recited in claim 1 has an
effect on the formation of the Keggin heteropolyanion itself. Thus, while
the Burzynski Declaration provides evidence that certain components
influence whether the Keggin heteropolyanion forms, we are of the view that
the evidence in favor of the combination outweighs the evidence presented
in the Burzynski Declaration.
In sum, we are of the view that the evidence in favor of obviousness is
sufficient to outweigh the evidence against obviousness presented by
Appellant.
Claims 5, 8, and 9
Although Appellant provides separate headings for these claims, we
are of the view that Appellant’s arguments that the comparative data is
“even more convincing” or is “more closely representative” of these claims
(Appeal Br. 19–21) is insufficient to identify reversible error, because
Appeal 2021-000578
Application 14/005,936

12
Appellant’s arguments do not meaningfully address the Examiner’s
application of the prior art to these claims. See Final Act. 5.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5, 6, 8,
9
103 Jansen, Cholley 1, 2, 5, 6, 8, 9

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).

AFFIRMED