Seki, Kohei

Patent Trials and Appeals Board

Jul 29, 2020

2019001971 (P.T.A.B. Jul. 29, 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.
13/060,318 02/23/2011 Kohei Seki Q123034 7835
23373 7590 07/29/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KOHEI SEKI
____________

Appeal 2019-001971
Application 13/060,318
Technology Center 1700
____________
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, 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 1–20 of Application 13/060,318. Final
Act. (January 16, 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 Sumitomo Chemical Co. as the real party
in interest. Appeal Br. 2
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I. BACKGROUND
The ’318 Application describes improvements in a process for
producing chlorine gas by oxidizing hydrogen chloride in a fixed-bed multi-
tubular reactor. Spec. 1.
Claim 1 is representative of the ’318 Application’s claims and is
reproduced below from the Claims Appendix of Appellant’s Brief.
1. A process for producing chlorine by feeding hydrogen
chloride and oxygen into catalyst beds which are formed in the
reaction tubes of a fixed-bed multitubular reactor and which
contain catalysts of a plurality of production lots for use in
oxidation of hydrogen chloride, characterized in that
the catalyst beds in one reaction zone in the fixed-bed
multitubular reactor are formed by packing catalysts of the
plurality of production lots, wherein the pore volume of a first
catalyst of one production lot selected from the plurality of
production lots is A [ml/g] and the specific surface area of the
first catalyst is E [m2/g], and the pore volume of a second
catalyst of another one production lot is B [ml/g] and the
specific surface area of the second catalyst is F [m2/g]; and in
that
the catalysts of the plurality of production lots satisfy a
condition (I) wherein a value of A/B is smaller than 1.20 with
the proviso that A and B are values of three significant figures,
having a relationship of A≥B, and
in addition to satisfying the condition (I), the catalysts of
the plurality of production lots satisfy a condition (IV) wherein
a value of E/F is smaller than 1.20, with the proviso that E and
F are values of three significant figures and have a relationship
of E ≥ F.
Br. Claims App. 1.
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II. REJECTION
On appeal, the Examiner maintains the following rejection: Claims 1–
20 are rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Hibi2 and Olbert.3 Final Act. 2–9.
III. DISCUSSION
Claims 1 and 10 of the ’318 Application are independent. Appellant
argues for reversal of these independent claims separately. See generally Br.
Appellant does not present separate argument with respect to any of the
dependent claims in the ’318 Application. Accordingly, we address
independent claims 1 and 10 below. Dependent claims 2–9 will stand or fall
with claim 1, from which they ultimately depend. Dependent claims 11–20,
which ultimately depend from claim 10, will stand or fall with their parent
independent claim.
A. Claim 1
The Examiner finds that Hibi describes or suggests each limitation of
claim 1 except that Hibi “does not specifically disclose that the catalyst beds
are formed by packing catalysts of plurality of production lots in that the
ratio of pore volume of one catalyst to another catalyst is smaller than 1.20.”
Final Act. 7. The Examiner further states that it would have been obvious to
a person of ordinary skill in the art to select catalysts that meet the recited
pore volume ratio claim limitation and that “even if the catalysts are
produced by different methods or from different lots, since they required to
meet the same requirements, they would have the same properties, such as

2 US 2002/0028173 A1, published March 7, 2002.
3 US 2004/0115119 A1, published June 17, 2004.
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pore size, pore volume, or at least within the ‘margin of error’ or within the
acceptable variation of each other.” Id.; see also id. at 4. In sum, the
Examiner finds that Hibi inherently describes or suggests using catalysts
from a plurality of production lots that have a pore volume ratio of less than
1.20.
We cannot sustain the rejection based on this finding for two reasons.
First, the rejection is based upon the knowledge and inferences that
the Examiner determined would have been obvious to a person having
ordinary skill in the art. See Final Act. 7–8. The record, however, lacks any
discussion or findings regarding the education, knowledge, experience, and
technical skill of the person having ordinary skill in the art. Id. The Supreme
Court has held that the level of ordinary skill in the art is a part of the
background against which “the obviousness or nonobviousness of the
claimed subject matter is determined.” Graham v. John Deere Co., 383 U.S.
1, 17–18 (1966). Where, as here, the rejection relies heavily upon the
knowledge and inferences made by a person of ordinary skill in the art, the
Examiner must make—on the record—specific findings regarding this
Graham factor. Such findings are needed to prevent the unwarranted use of
hindsight in making a rejection. Omitting these findings deprive applicants
of the chance to put in evidence and argument to rebut the unstated findings.
In such situations, applicants are procedurally and substantively
disadvantaged in prosecuting applications and seeking Board review of
rejections.
Second, the Examiner has not identified any description or provided
any reasoning that supports the necessary finding that the range of
“acceptable variation” in the pore volume of different lots of catalyst is
sufficiently small that the pore volume ratio would necessarily be less than
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1.20. In re Olerich, 666 F.2d 578, 581 (CCPA 1981) (“Inherency . . . may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not
sufficient.”).
In the alternative, the Examiner found that Olbert describes a process
for making chlorine by gas-phase oxidation of hydrogen chloride in a fixed
bed reactor comprising a bundle of parallel catalyst tubes. Id. at 7–8. Olbert
describes the reactor is containing a large number of these tubes, typically in
excess of 1000. Id. at 8 (citing Olbert ¶ 25). The Examiner further found that
Olbert describes using a liquid heat transfer medium to remove the heat
generated by the exothermic reaction occurring inside the catalyst tubes. Id.
(citing Olbert Fig. 1, ¶ 80).
Based on these findings, the Examiner reasons:
If the catalyst in one tube has a different pore volume
than that of the catalyst in other tubes, these tubes would then
have different reaction rates and generate different amounts of
heat. In this case, the liquid transfer medium may sufficiently
remove heat from one reaction tube but not from other tubes.
Any tubes that suffered from hot spots because of insufficient
heat removal would require replacement sooner than those that
did not have hot-spot problem. As disclosed in Olbert ’119, the
number of tubes in a reactor is preferred to be more than 1,000;
thus, it would be cumbersome to determine, isolate and replace
random tubes that had suffered from hot-spot problem.
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to use catalyst with the
same macro pore size, or is close to being the same as possible,
in all the catalyst tubes in the process of Hibi ’173 because the
heat removal step would be facilitated if that [sic] the reaction
rate and the amount of heat being generated in each tube are the
same.
Id. at 8–9.
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The Examiner’s rejection based upon the combination of Hibi and
Olbert cannot be sustained for two reasons.
First, the rejection relies heavily on the knowledge and inferences that
a person having ordinary skill in the art would have made based upon the
description provided in Olbert. As discussed above, the record lacks any
findings regarding the background and training of such a person. The
Examiner, therefore, has failed to put findings needed to support the
rejection on the record.
Second, the Examiner has not explained why a person having ordinary
skill in the art would necessarily combine Hibi and Olbert in the manner set
forth in the rejection such that the pore volume ratio is less than 1.20. The
record does not contain evidence or argument to support the finding that the
use of catalysts with a pore volume ratio in excess of 1.20 would suffer the
hot spot problem relied upon by the Examiner. Indeed, we doubt that such
evidence exists because the presence or absence of hot spots depends on
many variables, including the capacity of the cooling system and its ability
to circulate the heat transfer medium efficiently. At most, the Examiner’s
reasoning supports a conclusion that it would have been obvious to match
the properties of the catalyst tubes to the extent needed to avoid the creation
of hot spots. Once this is accomplished, however, the Examiner provides no
reason to go to the effort to further decrease differences between the catalyst
lots used to fill different tubes. In other words, if hot spots could be avoided
by using catalysts with a pore volume ratio of less than 1.25, the record does
not support the needed finding that a person having ordinary skill in the art
would have had a reason to further reduce the pore volume ratio.
As discussed above, the Examiner has not identified the necessary
evidence or provided the necessary reasoning to support the rejection of
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claim 1. We, therefore, conclude that an impermissible amount of hindsight
underlies the rejection of claim 1.
In view of the foregoing, we reverse the rejection of claims 1–9 of the
’318 Application.
B. Claim 10
The Examiner rejected independent claim 10 for the same reasons and
using the same logic relied upon in the rejection of claim 1. As discussed
above, we have determined that the absence of necessary evidence and
findings of fact rejection suggests that the rejection amounts to an
impermissible hindsight reconstruction of the claimed invention.
Thus, we also reverse the rejection of claims 10–20 of the ’318
Application.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 103(a) Hibi, Olbert 1–20
Overall Outcome 1–20
REVERSED