IFP Energies nouvelles

Patent Trials and Appeals BoardMar 22, 2021

2020002699 (P.T.A.B. Mar. 22, 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. 15/500,843 01/31/2017 Karin BARTHELET PET-3126 6748 23599 7590 03/22/2021 MILLEN, WHITE, ZELANO & BRANIGAN, P.C. 2200 CLARENDON BLVD. SUITE 1400 ARLINGTON, VA 22201 EXAMINER NGUYEN, TAM M ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 03/22/2021 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 KARIN BARTHELET, ARNAUD BAUDOT, MARC-ANTOINE LELIAS, and OLIVIER DUCREUX Appeal 2020-002699 Application 15/500,843 Technology Center 1700 Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and GEORGE C. BEST, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–6. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM, but because our reasoning differs from that of the Examiner, we denominate our affirmance as involving a new ground of rejection. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as IFP Energies nouvelles. Appeal Br. 1. Appeal 2020-002699 Application 15/500,843 2 CLAIMED SUBJECT MATTER The claims are directed to an alumina-based adsorbent containing an alkali element. See, e.g., claim 1. The adsorbent is useful for removing acid molecules, such as carbonyl sulphide (COS) and carbon dioxide (CO2), from liquid or gaseous hydrocarbon flows. Spec. 1:1–5. The adsorbent is made by doping an alumina support with an alkali element. According to the Specification, Appellant has discovered that using an alumina support containing sodium in a specified range as the starting material for doping results in an adsorbent product with a high capacity for the adsorption of acidic molecules. Spec. 5:12–23. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An adsorbent comprising an alumina support and at least one alkali element, said adsorbent being obtained by the introduction of at least one alkali element, identical to or different from sodium, onto an alumina support the sodium content of which, expressed as Na2O equivalent, before the introduction of the alkali element or elements, is comprised between 1500 and 3500 ppm by weight with respect to the total weight of the support. Appeal Br. 8 (Claims Appendix). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Lee FR 2 690 855 A1 Nov. 12, 1993 Millet EP 0 922 482 A1 Dec. 3, 1998 Appeal 2020-002699 Application 15/500,843 3 REJECTIONS Claims 1–6 are rejected under 35 U.S.C. § 102(a)(1)2 as being anticipated by Millet. Final Act. 2. Claims 1–6 are rejected under 35 U.S.C. § 102(a)(1)3 as being anticipated by Lee. Final Act. 3. OPINION Turning first to the rejection of claims 1–6 as anticipated by Millet, we note that Appellant does not argue the claims separately. Appeal Br. 2–7. We select claim 1 as representative for resolving the issues on appeal. 37 C.F.R. § 41.37(c)(1)(iv). The first issue is: Has Appellant identified a reversible error in the Examiner’s finding that, based on the similarities in starting material and processing, it is reasonable to conclude that the adsorbent of claim 1 is patentably indistinguishable from the adsorbent of Millet? Appellant has not identified a reversible error in that finding and, thus, we must consider a second issue: Has Appellant provided evidence that the adsorbent product of claim 1 is, in fact, patentably different in structure than that of Millet? As to this second question, we determine that Appellant’s evidence is insufficient to show that there is a patentable difference, but because the Examiner did not adequately address that question, we denominate our 2 Although the Examiner lists the statutory basis as pre-AIA 35 U.S.C. § 102(b), Final Act. 2, the correct statutory basis is post-AIA 35 U.S.C. § 102(a)(1). The error was harmless given Appellant understands that post- AIA 35 U.S.C. § 102(a)(1) is the correct statutory basis. Appeal Br. 2. 3 We likewise list the corrected statutory basis for the rejection over Lee. Appeal 2020-002699 Application 15/500,843 4 affirmance as involving a new ground of rejection. We address both issues further below. We start by considering how the various recitations within claim 1 limit the adsorbent of claim 1. Claim 1 is directed to an adsorbent, i.e., a product, but claim 1 also includes limitations directed to the method of making the adsorbent product. “It has long been the case that an old product is not patentable even if it is made by a new process.” Amgen Inc. v. F. Hoffman-LA Roche Ltd, 580 F.3d 1340, 1366 (Fed. Cir. 2009). “However, a new product may be patented by reciting source or process limitations so long as the product is new and unobvious.” Id. Thus, we consider limitations on the structure of the adsorbent and how the starting material and process limitations further limit the structure of the adsorbent. In terms of directly recited structural and compositional limitations, claim 1 recites an adsorbent comprising two components, an alumina support and at least one alkali element. In terms of the process of making the adsorbent, claim 1 further recites a step of introducing at least one alkali element, which can be sodium, onto a sodium-containing alumina support. Thus, ultimately, the product is an alumina support containing the starting sodium and the added alkali element, which can also be sodium. Where the added alkali element is also sodium, the concentration of sodium, expressed as Na2O equivalent, in the end product adsorbent need only be something greater than the starting sodium of between 1500 and 3500 ppm to meet the claim. The Examiner finds that Millet discloses forming an adsorbent containing from 4 to 10 wt% alkali or alkaline-earth metal oxide, exemplifying K2O, Na2O, and CaO. Final Act. 2; Millet ¶ 29. In fact, Millet Appeal 2020-002699 Application 15/500,843 5 discloses specific examples of adsorbents, one with calcined alumina containing approximately 2% of sodium oxide (Na2O) and a second with calcined alumina containing about 7% by mass of sodium oxide (Na2O). Millet ¶ 38. Thus, Millet teaches end product adsorbents having an alumina support containing sodium in a concentration meeting the compositional requirements of claim 1, i.e. greater than 1500–3500 ppm in the ultimate product adsorbent. The Examiner also finds that Millet makes the adsorbent by a process similar to that of Appellant. Final Act. 2–3. Millet forms the adsorbent by impregnating an alumina support with saline solution, drying, and calcining. Millet ¶ 29. This process is similar to that of Appellant, albeit without any mention of using a starting alumina support already containing sodium. Compare Millet ¶ 29, with Spec. 13–14. But because sodium is added by Millet and the ultimate end product concentration meets the requirements of claim 1, we agree with the Examiner that the similarities in materials and processing provide a reason to conclude that the prior art products are inherently the same or similar to those claimed. This shifted the burden to Appellant to show that the sodium concentration in the starting alumina support translates into a property difference in the end product. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (explaining that an examiner’s finding of substantial identity in products and processes shifts the burden to the applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product). If Appellant shows a difference in properties, we infer that the claimed product differs in structure from Millet’s product. Appellant contends that the claimed product is physically different from that of Millet and points to the examples disclosed in the Specification Appeal 2020-002699 Application 15/500,843 6 and data set forth in Table 1 in support. Appeal Br. 2–6; see also Spec. 21– 26; Table 1. Appellant’s evidence is not persuasive because unfixed variables prevent a proper comparison between the inventive examples A1–A3 and the comparative examples A4–A6. Specifically, not only is the starting concentration of sodium varied, but the pore volume and specific surface area are also varied. Inventive Examples A1–A3 each have a pore volume of 0.5 mL/g and a specific surface area of 341 m2/g whereas none of the comparative examples have that pore volume and specific surface area. Comparative example A4 has values of 0.6 mL/g and 313 m2/g, A5 has values 0.7 mL/g and 282 m2/g, and A6 has yet different values of 0.35 mL/g and 267 m2/g. Thus, we are unable to determine from the data whether the difference in COS adsorption capacity over the 4 cycles reported in Table 1 is due to the presence of the starting sodium, one of the other variables, or a combination of the variables. As Appellant’s data is not sufficient to support a conclusion that the timing of the addition of sodium, in fact, results in a property difference in the resulting adsorbent, we cannot say Appellant has met the burden in showing the product is patentably different. The rejection still stands. Turning to the rejection of claims 1–6 as anticipated by Lee, we note that Appellant argues that the same conclusion as for Millet applies. Appeal Br. 7. Thus, our reasons for affirming the Examiner’s rejection over Lee mirror those explained above. Because our analysis regarding Appellant’s showing differs from that of the Examiner, we denominate our affirmance as involving a new ground of rejection such that Appellant is afforded an opportunity to respond. Appeal 2020-002699 Application 15/500,843 7 CONCLUSION The Examiner’s decision to reject claims 1–6 is AFFIRMED, but a new ground entered. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–6 102(a)(1) Millet 1–6 1–6 1–6 102(a)(1) Lee 1–6 1–6 Overall Outcome 1–6 1–6 RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Appeal 2020-002699 Application 15/500,843 8 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; 37 C.F.R. § 41.50(b)