Ex Parte Chettouf et al

Patent Trial and Appeal BoardMay 31, 2013

12307937 (P.T.A.B. May. 31, 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. 12/307,937 01/08/2009 Abderrahmane Chettouf TS1644 US 6624 23632 7590 06/03/2013 SHELL OIL COMPANY P O BOX 2463 HOUSTON, TX 77252-2463 EXAMINER LI, JUN ART UNIT PAPER NUMBER 1732 MAIL DATE DELIVERY MODE 06/03/2013 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 ABDERRAHMANE CHETTOUF, GERARDUS PETRUS LAMBERTUS NIESEN, MARINUS JOHANNES REYNHOUT, and DAVID SCHADDENHORST ____________________ Appeal 2011-012685 Application 12/307,937 Technology Center 1700 ____________________ Before JAMESON LEE, JAMES B. ARPIN, and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges. CRUMBLEY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012685 Application 12/307,937 2 Abderrahmane Chettouf, Gerardus Petrus Lambertus Niesen, Marinus Johannes Reynhout, and David Schaddenhorst (collectively, “Appellants”) seek relief under 35 U.S.C. § 134(a) from the Examiner’s final rejection of Claims 1-8 and 10-17.1 Claim 9 is canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE The appealed claims are directed to a process for hydrocarbon synthesis. Claim 1, set forth below, is illustrative of the subject matter on appeal: 1. A method of supporting a hydrocarbon synthesis catalyst material comprising a catalytically active metal and a carrier material on a substrate comprising the steps of: (a) applying the catalyst material to the substrate; and (b) heating the catalyst material to form a catalyst material layer fixed to the substrate, wherein - the substrate is a metal substrate and comprises: an adhesion layer with a thickness of l-10µm, said adhesion layer is selected from the group consisting of titania, alumina, silica and zirconia, and a primer between the adhesion layer and the substrate; - the catalyst carrier is titania or a precursor therefore; - the catalyst material applied in step (a) comprises 60 to 90 weight% solvent calculated on the total weight of the catalyst material layer; - when the catalyst material is subjected to the heating step (b) it comprises at most 10 weight % of solvent, calculated on the total weight of the catalyst material layer; 1 Application No. 12/307,937, entitled Process for Hydrocarbon Synthesis, filed January 8, 2009. The real party in interest is listed as Shell Oil Company. Appeal 2011-012685 Application 12/307,937 3 - in heating step (b) the catalyst material is heated to a temperature in the range between 250°C and 800°C; - cracks having sub-millimetre widths are formed in the catalyst material layer creating domains with the range of the relative sizes of the domains being approximately 1:5; - after step (b) the catalyst material layer has a thickness of 20- 80 microns. Appellants argue the patentability of Claims 1-8 and 10-17 together; therefore, Claims 2-8 and 10-17 stand or fall together with Claim 1. 37 C.F.R. § 41.37(c)(1)(vii); Hyatt v. Dudas, 551 F.3d 1307, 1311-14 (Fed. Cir. 2008). The Examiner relies upon the following evidence of unpatentability: Wang (“Wang I”) Gimpel et al. (“Gimpel”) Wang (“Wang II”) WO 01/12323 A2 WO 02/07872 A1 US 2003/0119920 A1 Feb. 22, 2001 Jan. 21, 2002 Jun. 26, 2003 The Rejected Claims Claims 1-8 and 10-17 were rejected under 35 U.S.C. §103(a) as they would have been obvious over the combined teachings of Gimpel, Wang I, and Wang II. ANALYSIS Appellants disclose methods of preparing catalysts useful in hydrogenation reactions, in which the catalyst material is applied to a substrate which then supports the catalyst. Spec.2 1:1-12. According to Appellants, the high temperatures used in hydrogenation reactors tend to 2 We refer to Appellants’ specification as “Spec.” Appeal 2011-012685 Application 12/307,937 4 cause separation of the catalyst from the substrate due to differing rates of thermal expansion. Id. at 3:11-38. Appellants attempt to address this separation problem by preparing the catalyst and substrate using their claimed method. One of the features of Appellants’ methods is that cracks are allowed to develop on the surface of the catalyst material in a controlled manner. Appellants propose to control the cracking of the catalyst layer by controlling the evaporation of solvent from the catalyst after it is applied to the substrate. Id. at 6:19-23. According to Appellants, it has been commonly understood that a smooth (i.e., non-cracked) catalyst layer would best prevent separation of the catalyst from the substrate during processing. Id. at 3:29-33. Appellants represent that they have determined that, to the contrary, “the presence of cracks at regular distances such that there is no continuous catalyst layer on the substrate surface, reduces any stress build- up.” Id. at 13:30-14:2. Appellants claim the uniformity of the cracks in two ways: in Claim 1, the cracks are said to have “domains with the range of the relative sizes of the domains being approximately 1:5.” Claim 10, the other independent claim on appeal, recites that the cracks have “domains with the sizes of the domains of the catalyst material layer formed by the cracks being within 80% of one standard deviation from the mean domain size.” The Examiner rejected both independent claims and all dependent claims as they would have been obvious in view of Gimpel, Wang I, and Wang II. Ans.3 3-4. There appears to be no dispute between Appellants and 3 We refer to the Appeal Brief filed April 7, 2011 (“App. Br.”) and the Examiner’s Answer mailed May 18, 2011 (“Ans.”). Appeal 2011-012685 Application 12/307,937 5 the Examiner that the combination of references teaches all elements of the claimed process, except that the references are silent as to: 1) that when the catalyst is heated in step (b) of the process, it comprises at most 10 weight % of solvent; and 2) the presence of cracks in the catalyst layer. To supply these missing elements, the Examiner alleges that the combination of Gimpel, Wang I, and Wang II would result in a process that is substantially similar to that claimed. Id. at 6. Therefore, “the recited catalyst solvent percentage in step [(b)] and recited cracks are expected because similar evaporation of the solvent is expected during substantially heating process as disclosed by Gimpel in view of Wang [I] and Wang [II].” Id. In other words, because the prior art teaches a substantially similar process, the Examiner presumed that the product of that process would have similar properties. The Examiner, therefore, asks Appellants to prove a negative and places the burden of differentiating the prior art from the claimed invention on Appellants. Id. at 7 (“There is no data/evidence to demonstrate that prior art disclosed catalyst material will not have such claimed cracks.”) (emphasis added). Although no cases are cited, the Examiner appears to be following the rationale of cases such as In re Best, which held that products produced by identical or substantially identical processes establish a prima facie case of obviousness. 562 F.2d 1252, 1255 (C.C.P.A. 1977). The key to an In re Best rationale, however, is that the processes must be substantially identical. That is not the case here. The Examiner concedes that the cited art is silent on one crucial process parameter: the solvent content of the catalyst when it is subjected to heating. Therefore, we cannot conclude that the process Appeal 2011-012685 Application 12/307,937 6 taught by the combined prior art was substantially identical to that claimed.4 Indeed, according to Appellants’ specification, this missing element of solvent content is what allows control and uniformity of crack development. Spec. 6:19-23. There is no reason to conclude that a process in which the solvent content is not limited would also produce the controlled cracks that are claimed. Because the cited art does not teach a substantially similar product, the burden has not shifted to Appellants to establish that the prior art process does not lead to the production of the claimed cracks. The Examiner has not set forth any evidence that the cited prior art discloses catalyst layers with cracks having sub-millimeter widths creating domains with the range of the relative sizes of the domains being approximately 1:5. Nor has the Examiner provided a reason why a person of ordinary skill in the art would have found the presence of such cracks to be obvious. CONCLUSION For the foregoing reasons, we conclude that the Examiner has not established a prima facie case of obviousness. We, therefore, reverse the rejection of Claims 1-8 and 10-17. REVERSED cam 4 We also are not persuaded that the Examiner’s presumption that “the recited catalyst solvent percentage [is] expected because similar evaporation of the solvent is expected during substantially [similar] heating process” is correct. Ans. 6. The “at most 10 weight % of solvent” claimed is a characteristic of the catalyst when it is subjected to heating, not a result of the heating step itself. Spec. 7:28-8:9.