Omer Refa. Koseoglu et al.

Patent Trials and Appeals BoardAug 7, 2020

2019002720 (P.T.A.B. Aug. 7, 2020)

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. 14/987,141 01/04/2016 Omer Refa KOSEOGLU 214,271 (SA3054) 5288 38137 7590 08/07/2020 ABELMAN, FRAYNE & SCHWAB 666 THIRD AVENUE, 10TH FLOOR NEW YORK, NY 10017 EXAMINER LI, JUN ART UNIT PAPER NUMBER 1796 MAIL DATE DELIVERY MODE 08/07/2020 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 OMER REFA KOSEOGLU, YAMING JIN, ZINFER ISMAGILOV, SVETLANA YASHNIK, ANTON SALNIKOV, MIKHAIL KERZHENTSEV, and VALENTIN PARMON ____________ Appeal 2019-002720 Application 14/987,141 Technology Center 1700 ____________ Before JEFFREY B. ROBERTSON, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 10–23 of Application 14/987,141. Final Act. (July 24, 2018). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we reverse. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the Boreskov Institute of Catalysis and Saudi Arabian Oil Co. as the real parties in interest. Appeal Br. 2. Appeal 2019-002720 Application 14/987,141 2 I. BACKGROUND The ’141 Application describes a catalyst useful for the gas phase oxidation of sulfur-containing hydrocarbons. Spec. ¶ 1. In particular, the Specification describes Cu/Zn/Al catalysts which are promoted with at least one oxide of a group VIB metal such as molybdenum or tungsten. Id. Claim 10 is representative of the ’141 Application’s claims and is reproduced below from the Claims Appendix to the Appeal Brief. 10. A catalyst composition useful in oxidative desulfurization of a sulfur containing hydrocarbon, comprising: copper oxide in an amount ranging from 10 weight percent to 50 wt.%, zinc oxide in an amount ranging from 5 wt.% to less than 20 wt.%, aluminum oxide in an amount ranging from 20 wt.% to 70 wt.%, and at least one Group VIB metal oxide promoter, in an amount up to 20 wt.% of said catalytic composition. Appeal Br. 15. II. REJECTION On appeal, the Examiner maintains2 the following rejection: Claims 10–23 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Bourane3 in view of Wessel.4 Final Act. 2. 2 The Examiner has withdrawn a provisional obviousness-type double patenting rejection and a non-provisional obviousness-type double patenting rejection. Answer 6. 3 US 2014/0197074 A1, published July 17, 2014. 4 US 2006/0035784 A1, published February 16, 2006. Appeal 2019-002720 Application 14/987,141 3 III. DISCUSSION A. The rejection of independent claim 10 The Examiner found that Bourane describes a Cu/Zn/Al catalyst for desulfurization of hydrocarbons comprised of weight percentages of copper oxide, zinc oxide, and aluminum oxide that overlap with the corresponding ranges recited in claim 10. Final Act. 2 (citing Bourane ¶ 59). The Examiner found that Bourane does not expressly teach the use of at least one group VIB metal oxide in an amount of up to 20% of the catalytic composition. Id. The Examiner further found that Wessel describes a catalyst for removing sulfur from a hydrocarbon stream comprising from 5 to 70% by weight of copper, silver, zinc, molybdenum, iron, cobalt, nickel, or mixtures thereof. Id. at 3 (citing Wessel ¶ ¶ 19–21). The Examiner found that Wessel describes using copper and molybdenum together and that molybdenum oxide can be used preferably in amounts between 3 and 50% by weight. Id. The Examiner also found that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Bourane’s catalyst by incorporating the amount of molybdenum described by Wessel. Id. According to the Examiner, such a combination of elements known to be effective in oxidative removal of sulfur from a hydrocarbon stream amounts to the use of elements having known functions to achieve a predictable results. Id. The Examiner further found that Bourane and Wessel describe catalyst that function under substantially the same operating conditions. In particular, the Examiner asserts, without citation, that Bourane describes conducting desulfurization at temperatures as low as 180°C,5 “which is close 5 In the Examiner’s Answer, the Examiner admits that this statement is erroneous. Answer 9. Appeal 2019-002720 Application 14/987,141 4 enough or substantially the same as that of operating conditions as disclosed by Wessel.” Final Act. 8. B. Appellant’s arguments Appellant presents argues for reversal of the rejection of claims 10, 11, and 14–34 as a group and presents separate arguments for reversal of the rejections of each of claims 12 and 13. Appeal Br. 5. Because we reverse the rejection of independent claim 10, we need not address Appellant’s arguments regarding claims 12 and 13. Appellant agrees that Bourane describes the base Cu/Zn/Al catalyst recited in claim 10. Appeal Br. 5.Appellant, however, argues that the Examiner erred by combining Bourane and Wessel because Bourane and Wessel describe catalysts that operate in different ways at different operating temperatures such that one cannot routinely substitute portions of one catalyst for portions of the other. Id. at 8. In particular, Appellant argues that Bourane’s catalyst has a preferred operating temperature of 300°C to 600°C. Id. at 7 (citing Bourane ¶ 66). Appellant admits that Bourane describes operating at a temperature as low as 200°C. Id. Wessel, on the other hand, describes its catalyst as operating at temperatures between −50°C and 150°C. Id. (citing Wessel Abstract). Wessel describes its preferred operating temperature as between 15°C and 40°C, with room temperature being most preferred. Id. (citing Wessel ¶ 16). The Examiner responds that Appellant has not explained why the difference in the stated operating temperatures for the catalyst described in Bourane and Wessel is significant. Answer 9. According to the Examiner, Bourane and Wessel describe substantially the same catalyst compositions and that these compositions perform substantially the same function. Id. Finally, the Examiner asserts that Wessel’s disclosure that its catalyst can be Appeal 2019-002720 Application 14/987,141 5 used at temperatures between −50°C and 150°C does not limit Wessel’s catalyst composition to use at those temperatures, nor does it indicate that the composition cannot be used at the temperatures described in Bourane. Id. Thus, according to the Examiner, it would have been obvious to a person of ordinary skill in the art to modify Bourane in view of Wessel because the references are drawn to the same technical fields (catalysis), constituted with the same ingredients (copper oxide, zinc oxide, and aluminum oxide) and share common utilities (removing sulfur from hydrocarbon streams). Id. at 8. We reverse because the Examiner is improperly placing the burden of proof on Appellant. Catalysis is an unpredictable field. Inventors have an incentive to describe as broad a useful range for their inventions as possible. In view of the facts, the Examiner cannot simply ignore a 50°C difference in the operating temperature ranges for the Wessel and Bourane catalysts by claiming that the operative ranges are “close enough.” Although Appellant’s argument would have been stronger if they had been able to identify a concrete chemical difference between catalyst function in the different temperature ranges—e.g., a mechanistic difference—we cannot countenance the Examiner’s unsupported statements as a way to elide significant differences between the disclosures in the prior art. In sum, the Examiner has not provided an adequate reason to combine Bourane and Wessel in the manner proposed in the rejection of claim 10. The Examiner, therefore, has not established a prima facie case of obviousness of claim 10. In view of the foregoing, we reverse the rejection of independent claim 10. Thus, we also reverse the rejection of claims 11–23, which depend from claim 10. Appeal 2019-002720 Application 14/987,141 6 IV. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 10–23 103 Bourane, Wessel 10–23 Overall Outcome 10–23 REVERSED