Ex Parte Butler et al

Patent Trial and Appeal BoardApr 26, 2013

12345550 (P.T.A.B. Apr. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/345,550 12/29/2008 James R. Butler COS-1181 7944 25264 7590 04/26/2013 FINA TECHNOLOGY INC PO BOX 674412 HOUSTON, TX 77267-4412 EXAMINER DANG, THUAN D ART UNIT PAPER NUMBER 1772 MAIL DATE DELIVERY MODE 04/26/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte JAMES R. BUTLER and JOSEPH E. PELATI ________________ Appeal 2012-002368 Application 12/345,550 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and DONNA M. PRAISS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-002368 Application 12/345,550 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-21, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a process for making styrene. Claims 1 and 11 are illustrative: 1. A process for making styrene comprising: converting methanol to formaldehyde in one or more first reactors to form a first product stream comprising formaldehyde; and reacting toluene and the formaldehyde in one or more second reactors to form a second product stream comprising styrene; wherein the toluene and the formaldehyde are fed to the one or more second reactors in a ratio of toluene:formaldehyde ranging from 5:1 to 1:5. 11. A process for making styrene comprising: converting methanol to formaldehyde in one or more first reactors to form a first product stream comprising one or more of formaldehyde, hydrogen, water, or methanol; passing the first product stream to a first separation stage for separating the formaldehyde from the first product stream; feeding the formaldehyde directly from the first separation stage to one or more second reactors; reacting toluene and the formaldehyde in the one or more second reactors to form a second product stream comprising one or more of styrene, toluene, water, or formaldehyde; passing the second product stream to a second separation stage for separating styrene from the second product stream. Appeal 2012-002368 Application 12/345,550 3 The References Payne US 2,519,788 Aug. 22, 1950 Bruylants US 4,479,024 Oct. 23, 1984 GEOFFREY Q. MILLER AND JOERG STÖCKER, SELECTION OF A HYDROGEN SEPARATION PROCESS 1-27 (UOP LLC 1999) (hereinafter Miller). The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1- 16 and 18-21 over Bruylants in view of Payne and claim 17 over Bruylants in view of Payne and Miller. OPINION We affirm the rejections. The Appellants argue the claims in two groups: 1) claims 1-10 and 2) claims 11-21 (Br. 9-14). Although an additional reference is applied in the rejection of claim 17, the Appellants do not separately argue that claim. See id. We therefore limit our discussion to one claim in each group, i.e., claims 1 and 11. The other claims in each group stand or fall with the claim we address. See 35 U.S.C. § 41.37(c)(1)(vii) (2007). Claim 1 Bruylants discloses a gas phase catalytic process for producing styrene from toluene and formaldehyde at a formaldehyde:toluene molar ratio of 0.001 to 0.10 (toluene:formaldehyde molar ratio of 1000:1 to 10:1) (abstract; col. 1, ll. 8-9, 38-49). Bruylants exemplifies styrene production at toluene:formaldehyde molar ratios of 99:1, 97.5:2.5, 95:5, 90:10 and 75:25 (the last of which falls within the Appellants’ claim 1) (col. 4, ll. 53-60). Appeal 2012-002368 Application 12/345,550 4 Payne discloses “a process wherein methanol is partially oxidized and dehydrogenated to formaldehyde over one catalyst and the unconverted methanol then oxidized over another catalyst to formaldehyde” (col. 1, l. 53 – col. 2, l. 2). The Appellants argue that Bruylants’ statement that “[c]learly high selectivity and yield to styrene, without ethylbenzene formation are favored by operation at toluene/formaldehyde mole ratios greater than 95:5” (col. 4, ll. 61-63) teaches away from the Appellants’ recited range of 5:1 to 1:5 (Br. 10). Although Bruylants’ evidence shows that the styrene selectivity and yield are higher when the toluene:formaldehyde molar ratio is 95:5 than when it is 75:25 (which is within the Appellants’ range), the evidence shows that the use of a 75:25 toluene:formaldehyde molar ratio is effective for producing styrene (col. 4, ll. 57-59). Thus, making styrene using a 75:25 toluene:formaldehyde molar ratio in Bruylants’ process would have been prima facie obvious to one of ordinary skill in the art. The Appellants do not disclose their styrene selectivity or yield. Hence, the record provides no indication that the styrene selectivity or yield obtained when the Appellants use a 75:25 toluene:formaldehyde molar ratio, which is within the Appellants’ recited range, is any better, let alone unexpectedly better, than the styrene selectivity or yield obtained by Bruylants using that toluene:formaldehyde molar ratio. Accordingly, we are not persuaded of reversible error in the rejection of claim 1 and its dependent claims 2-10. Appeal 2012-002368 Application 12/345,550 5 Claim 11 The Appellants argue that in view of Bruylants’ statement that “[i]t is obvious that there is an economic advantage when the desired product forms without waste or less desired product” (col. 3, ll. 1-3), one of ordinary skill in the art would not have used Payne’s process to make Bruylants’ formaldehyde reagent because Payne’s formaldehyde product contains methanol, hydrogen and water, all of which would be undesirable in Bruylants’ styrene product (Br. 11-13). The Examiner argues that “formaldehyde must obviously be separated out before it is used for reacting with toluene to produce styrene since others would not be required in the reaction between toluene and formaldehyde” (Ans. 7). The Appellants respond that the Examiner “is inserting an additional separation stage between the Payne process and the Bruylants process, that is neither taught nor suggested by either reference, in order to arrive at Appellants[’] claimed invention” (Br. 14). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. It appears that in accord with Bruylants’ statement that there obviously is an economic advantage to the product not containing less desired product (col. 3, ll. 1-3), one of ordinary skill in the art, through no more than ordinary creativity, would have removed process feed stream Appeal 2012-002368 Application 12/345,550 6 materials such as methanol, hydrogen and water that would contaminate the product. The Appellants have provided no evidence or technical reasoning to the contrary. Hence, we are not convinced of reversible error in the rejection of claim 11 or its dependent claims 12-21. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 1-16 and 18-21 over Bruylants in view of Payne and claim 17 over Bruylants in view of Payne and Miller are affirmed. It is ordered that the Examiner’s decision is affirmed. 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 sld