Ex Parte 6616909 et al

Patent Trial and Appeal Board

Nov 24, 2015

90011112 (P.T.A.B. Nov. 24, 2015)

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.
90/011,112 07/26/2010 6616909 086353-0059 6455
29171 7590 12/02/2016
BATTELLE MEMORIAL INSTITUTE
ATTN: IP LEGAL SERVICES, K1-53
P.O. BOX 999
RICHLAND, WA 99352
EXAMINER
TORRES VELAZQUEZ, NORCA LIZ
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
12/02/2016 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 TRAIL AND APPEALS BOARD
____________________

Ex parte BATTELLE MEMORIAL INSTITUTE,
Patent Owner and Appellant
____________________

Appeal 2015-005944
Reexamination control 90/011,112
Patent 6,616,909 B1
Technology Center 3900
____________________

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Battelle Memorial Institute (hereinafter “Patent Owner”), the real party in
interest1 of Patent 6,616,909 B1 (hereinafter the “’909 patent”), requests rehearing
in response to the Board’s Decision of November 25, 2015 (“Decision”) affirming
the Examiner’s decision to reject claims 19, 55, and 64–72 under 35 U.S.C.

1 See Appellant’s Appeal Brief filed November 14, 2011 (hereinafter “App. Br.”)
at 1.
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§ 103(a) as unpatentable over Tonkovich2 in view of Schubert3 alone and further in
view of Yarrington.4 Patent Owner’s Request for Rehearing 1, filed January 25,
2016 (“Request”).
Requests for rehearing must comply with 37 C.F.R. § 41.52(a)(1) which
specifies in pertinent parts that “[t]he request for rehearing must state with
particularity the points believed to have been misapprehended or overlooked by the
Board.”
In their Request, Patent Owner states the following points were
misapprehended or overlooked in the Decision.
1. The Board erred in finding that “volumetric heat transfer rate is an
inherent property of a particular reactor design” and that optimization
inherently would have resulted in the claimed level of volumetric heat
flux. Request 2–5 and 7.
2. The Board erred in its optimization analysis because the volumetric heat
flux was not recognized to be a result-effective-variable. Request 6–7.
3. The Board overlooked the reasons, discussed in the Tonkovich
Declaration, paragraphs 7–12, why there would not have been an

2 A.L. Tonkovich et al., “The Catalytic Partial Oxidation of Methane
in a Microchannel Chemical Reactor,” Process Miniaturization: 2nd International
Conference on Microreaction Technology, Topical Conference Preprints, AICHE
Spring Meeting, New Orleans, March 9–12 1998, pp. 45–53.
3 K. Schubert et al., “Realization and Testing of Microstructure Reactors,
Micro Heat Exchangers and Micromixers for Industrial Applications in Chemical
Engineering,” Process Miniaturization: 2nd International Conference on
Microreaction Technology, Topical Conference Preprints, AICHE Spring Meeting,
New Orleans, March 9–12 1998, pp. 88–95.
4 U.S. Patent 5,023,276, issued June 11, 1991, to Robert M. Yarrington et al.
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expectation of success in combining the water heat exchanger of
Schubert with the reactor design of Tonkovich. Request 5 and 7–9.
4. The board misapprehended the adiabatic nature of the individual
channels of the monolith described in Yarrington. Request 9–11 and 18.
5. The Board overlooked the facts that Yarrington teaches the use of a
monolithic catalyst in an autothermal reformer, operating differently than
that plate reactor of Tonkovich, in combination with a hydrocarbon
synthesis reactor. Request 10–12.
6. The Board misapprehended what the skilled artisan would have
understood regarding the monolithic catalyst of Yarrington. Request 13
and 16–17.
7. The Board misapprehended that Yarrington’s adiabatic monolith would
have led away from the idea of combining a monolith with a process
requiring exceptionally high levels of heat transfer. Request 14–16.

Characterization of volumetric heat flux as an inherent property of the
reactor design
Patent Owner is correct that there was an error in the full paragraph on page
12 of the Decision. In fact, throughout the Decision “volumetric heat transfer
rate,” should have been referring to “volumetric heat flux,” which is the value
(“W[atts] of heat per cc of total reactor volume”) of steady-state heat transfer
recited in all the claims. See also Decision 7 (“claimed heat transfer rate” should
read “claimed volumetric heat flux”), 12–13 (“inherent volumetric heat transfer
rate” should read “inherent volumetric heat flux” and “optimized volumetric heat
transfer rate” should read “optimized volumetric heat flux”). The Decision
describes the ’909 patent’s definition of volumetric heat flux, as follows:
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FF2. The ’909 patent defines volumetric heat flux as the
amount of heat transferred (in watts) divided by “the sum of the
volume of the reaction chamber(s) and heat exchanger chambers(s)
including the volume of chamber walls.” ’909 patent, col. 3, ll. 40–
42. The ’909 patent states that “[r]eactors and methods of the present
invention can be characterized by various properties that they exhibit.
Heat flux is a particular important characteristic in the present
invention.” ’909 patent, col. 11, ll. 44–45. According to the ’909
patent, the volumetric heat flux of a particular reactor is calculated by
first determining the amount of conversion and estimating the
necessary energy to reach such conversion, and dividing that
conversion by the reactor volume. See ’909, col. 16, l. 23 to col. 17, l.
37 (“A microchannel isooctane steam reformer was built, with a total
volume of roughly 30 cubic centimeters . . . . The reactor was able to
reach isooctane conversions ranging from 86.5% to 95%, thus
requiring roughly 300 W of thermal energy . . . . The volumetric heat
flux of the reactor was roughly 10W/cc . . . . Under these conditions,
nearly 500 W of thermal energy were required to convert roughly
75% of the inlet isooctane stream set at 5.04 mL/min. This device
demonstrated a volumetric heat flux greater than 16 W/cc [500 W/30
cc = 16.667 W/cc].”).
Decision 7–8.
While a “volumetric heat transfer rate” may depend on particular reactor
conditions, as argued by Patent Owner in its request (see Request 2–5), that finding
is irrelevant where the claims are directed to volumetric heat flux and is silent as to
any particular reactor conditions. Based on the definition and example in the ’909
patent, volumetric heat flux is the amount of heat transferred for any given reaction
divided by the volume of all reactor and heat exchange chambers including the
volume of the chamber walls. Decision FF2. The amount of heat transferred is the
total amount of heat transferred for any given reaction and not a function of
amount over time and not the rate of heat transfer. Rather, the amount of heat
transferred is back calculated from the overall conversion measured for any given
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reaction. Decision FF2. We note that the claims are silent as to any particular
reaction conditions and thus encompass any reaction conditions for any thermal
catalytic chemical conversion reaction, including the reaction described by
Tonkovich and as routinely optimized using the techniques taught by Tonkovich
and Schubert.
Accordingly, the full paragraph on page 12 of the Decision, should be
rewritten as follows, with underlining showing text added and brackets showing
text deleted from the Decision:
Volumetric heat flux in Watts per cubic centimeter, as defined
by the ’909 patent, [transfer rate] is an inherent property of a
particular reactor design for any given reaction. FF2. Accordingly,
arriving at an optimal volumetric heat [transfer] flux would be
inherent in the optimization of reactor/heat exchanger designs in
accordance with the teachings of Tonkovich and Schubert for the
reactions described in Tonkovich.
We also note a similar error in the last sentence of the paragraph spanning
pages 12–13 of the Decision, which should be rewritten as follows, with
underlining showing text added and brackets showing text deleted from the
Decision (footnote 5 has been omitted in our reproduction but is to be retained
from the original decision):
With respect to the specific [heat transfer values] volumetric heat flux
values recited in the claims, the Examiner’s reasoning that the choice
of a specific [heat transfer rate] volumetric heat flux value would be
routine optimization to “maintain the reactor catalyst within a desired
temperature range and reduce the formation of undesirable by-
products” (Final 8; see also RAN 5–6) is supported by a
preponderance of the evidence as discussed above.
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While the change in terminology corrects any confusion on the record, we
do not find any error in the reasoning of the Decision, which is properly based on
the findings of fact as stated therein, as discussed in further detail below.

The volumetric heat flux would have been obvious over Tonkovich and
Schubert based on routine optimizations of the principles of Schubert applied to
the reaction described in Tonkovich
Patent Owner argues that the objective described in Tonkovich, namely short
residence times, which can only be achieved by providing rapid quenching, can be
achieved without increasing volumetric heat flux. Request 5. In particular, Patent
Owner points out that the goals can be met with a “relatively large” total volume,
“such that the volume over which volumetric heat flux is calculated is large (and,
hence, the heat transferred divided by the volume is relatively small).” Id.
Patent Owner’s argument is not supported by the teachings of Tonkovich
and Schubert, and does not show any fact overlooked or misapprehended. Neither
Tonkovich nor Schubert teach increasing heat removal with volumes that are
“relatively large,” and thus, Patent Owner’s arguments do not fairly address the
rejection made by the Examiner. To the contrary, Tonkovich teaches removing
heat production quickly via a “highly efficient embedded microchannel heat
exchanger[],” and not a large volume heat exchanger. See Decision FF4.
Likewise, Schubert is directed to microchannel heat exchangers for use in
catalyzed reactions and to optimizing such heat exchangers. Decision FF12 and
FF13.
Moreover, Tonkovich teaches that as the residence time is reduced, the yield
increases (and reduces the presence of side reactions). See Tonkovich, ¶ spanning
45–46; Decision 10, last full ¶. Tonkovich also teaches that millisecond reaction
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times are possible “because of the rapid thermal quenching that results from
integrated microchemical heat exchangers.” Id. 46, first full ¶. Thus, to the extent
that increasing the volume would have facilitated rapid quenching and short
residence times, as argued by Patent Owner, yield, or conversion, also would have
increased based on the teachings of Tonkovich.5 Thus, addressing a “relatively
large” volume increase, without addressing the described increase in yield and,
thus, the increase in total heat transferred by the improvement in rapid quenching,
is not persuasive.
Patent Owner argues that the volumetric heat flux is not expressly identified
in the art as a result effective variable and thus the Examiner has not shown that
this property can be optimized. Request 6–7. Patent Owner also argues that our
determination is contrary to law which requires that the property is “necessarily
present.” Id. at 7.
We are not persuaded that our Decision overlook or misapprehended any
area of law in applying the prior art to the claims of the ’909 patent. While the
prior art may be silent as to volumetric heat flux, the prior art expressly states
optimizing the two factors that are used to calculate volumetric heat flux. For
example, Tonkovich teaches an optimized yield, from which an optimum heat
transfer is back calculated. Decision 10. Likewise, both Tonkovich and Schubert
teach optimizing reactor designs of embedded microchannel heat exchangers for

5 We note that the calculations of volumetric heat flux of the example reactor and
reaction described in Tonkovich is based on a yield of only about 50% (Tonkovich
51, first full ¶), while Tonkovich expressly teaches that yields as high as 90% can
be achieved. Tonkovich, ¶ spanning 45–46. Thus, substantially higher yields, and
thus higher total heat transfer are to be expected with the optimization described in
Tonkovich and Schubert. See e.g., Tonkovich 50, next to last ¶ (expressly stating
that the configuration was “non-optimized”).
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optimal heat exchange. Decision 10–13. The overall volume would be calculated
from an optimal reactor design. Thus, the evidence supports a finding that
volumetric heat flux is a result effective variable, which is routinely optimized by
optimizing rapid thermal quenching and, thus, residence times (i.e., optimal yield)
and doing so by optimizing reactor design (i.e., total volume), as taught by the
prior art. Id. “The mere fact that multiple result-effective variables were
combined does not necessarily render their combination beyond the capability of a
person having ordinary skill in the art.” In re Applied Materials, Inc., 692 F.3d
1289, 1298 (Fed. Cir. 2012).
“[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276
(C.C.P.A. 1980); see also In re Luck, 476 F.2d 650, 652–53 (C.C.P.A. 1973) (use
of routine testing to identify optimum amounts of silane to be employed in a lamp
coating, without establishing a critical upper limit or demonstrating any
unexpected result, lies within the ambit of the ordinary skill in the art); In re
Esterhoy, 440 F.2d 1386, 1389 (C.C.P.A. 1971) (“One skilled in the art would thus
manifestly operate the Switzer et al. process under conditions most desirable for
maximum and efficient concentration of the acid. The conditions recited in the
claims appear to us to be only optimum and easily ascertained by routine
experimentation.”); In re Swain, 156 F.2d 246, 247–48 (C.C.P.A. 1946) (“In the
absence of a proper showing of an unexpected and superior result over the
disclosure of the prior art, no invention is involved in a result obtained by
experimentation.”).
It is true that a routine variable change may cause an unexpected effect.
However, this is the kind of situation that requires Patent Owner to show
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secondary considerations such as unexpected results or criticality to overcome the
prima facie case. See In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (“This court
and its predecessors have long held, however, that even though applicant’s
modification results in great improvement and utility over the prior art, it may still
not be patentable if the modification was within the capabilities of one skilled in
the art, unless the claimed ranges “produce a new and unexpected result which is
different in kind and not merely in degree from the results of the prior art.”);
(quoting In re Aller, 220 F.2d 454, 456 (C.C.P.A. 1955) and citing In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990)).
Patent Owner present no persuasive argument that the volumetric heat flux
recited in the claims is more would have been achieved through routine
optimization. Similarly, as stated in the Decision (Decision 13 and 15), Patent
Owner has not shown that the recited volumetric heat flux is critical to the
operation of the invention or produces any unexpected results.

Tonkovich Declaration Evidence
Patent Owner argues that the Decision does not address the reasons
supported by the Tonkovich Declaration as to why the combination of Tonkovich
and Schubert do not provide a reasonable basis for success. Request 7–9.
However, the Decision fully considered the Tonkovich declaration and found it not
persuasive for the reasons stated on pages 13–15 of the Decision.
Additionally, Dr. Tonkovich’s Declaration addresses catalytic packing,
pressure drop through a catalyst, temperature, reactants (e.g., methane), etc., which
are specific reaction conditions that are not recited in the claims. Thus, Patent
Owner’s arguments with respect to specific reactions conditions are not persuasive.
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See Request 8; PO App. Br. 9. Moreover, Tonkovich describes reaction conditions
and reactor design in a non-optimized form and expressly teaches that these
reaction conditions and the reactor design are routinely varied by the ordinary
artisan for optimal yield. See, e.g., Decision FF6 and FF7.
Accordingly, for the reasons discussed above and in the Decision, the Examiner
did not err in rejecting claims 19, 55, and 64–70 under 35 U.S.C. § 103(a) as
unpatentable over Tonkovich in view of Schubert.

The use of a monolithic catalyst in an autothermal reformer of Yarrington that
operates differently than that plate reactor of Tonkovich
Patent Owner argues that the Board misapprehended the teachings in
Yarrington of an autothermal reformer in determining that Yarrington teaches the
use of a monolithic catalyst in “any suitable type of hydrocarbon synthesis” and
that the autothermal reformer of Yarrington operates similarly to that of the reactor
in Tonkovich. Request 11 and 13–18.
Indeed, the reasoning set forth on pages 21–22 of the Decision
misapprehended the teachings of Yarrington in several respects. Accordingly, we
are persuaded of error in the Decision’s ultimate determination that the skilled
artisan would have had an expectation of success in using a monolithic catalyst, as
taught in Yarrington, in the rapid quenching reactor design taught by Tonkovich.
Tonkovich describes a highly exothermic partial oxidation reaction for the
generation of CO2 and hydrogen. Decision FF3; Tonkovich, ¶ spanning 45–46.
The highly exothermic partial oxidation reaction of Tonkovich requires very rapid
removal of heat from the reaction so as to create near isothermal conditions and to
avoid “hot spots, thermal runaway and possible explosions.” Decision FF4 and
FF5; Tonkovich, 46, second full ¶.
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Yarrington teaches this same partial oxidation reaction, but as a very small
part of an overall hydrocarbon fuel (specifically gasoline, diesel, and liquid
petroleum gas) synthesis reaction using the CO2 and hydrogen generated.
Yarrington, col. 4, ll. 26–35; Fig. 2. Unlike Tonkovich, Yarrington takes
advantage of the exothermic heat generation of the partial oxidation reaction and
couples it with a very highly endothermic steam reforming reaction, which is an
alternative process for the generation of CO2 and hydrogen from hydrocarbons.
Id., col. 4, ll. 45–56. Yarrington describes the use of monolithic catalysts for both
the exothermic and endothermic reactions, for the benefits of “low pressure drop
and high volumetric rate through-put of a monolithic body platinum group metal
catalyst [which] provides a reduced size and volume of catalyst,” “operations at
relatively very low O2 to C ratios without carbon deposition fouling the catalyst
and [enabling] efficient conversion of methane,” “more geometric surface area
exposed to the reactant gas than does a bed of coated beads,” and “lower catalytic
metal loading.” Yarrington, col. 5, ll. 5–26; Decision FF21. Yarrington also
teaches that at the time of the invention, catalytic partial oxidation using a platinum
group catalyzed monolith was known in the art for use in autothermal reformers of
the type described in Yarrington. Decision FF18; Yarrington, col. 2, ll. 35–54 and
col. 5, ll. 28–35 (“Such monolithic carrier members are often referred to as
‘honeycomb’ type carriers and are well known in the art.”) (emphasis added).
Yarrington is relied upon by the Examiner for the limited purpose of
showing that it was known in the art at the time of the invention to use a
monolithic catalyst, as opposed to a packed bed catalyst, in partial oxidation
reactions for the benefits described in Yarrington. Final Office Action 9 and 11-
12. Yarrington is not being relied upon for the particular structure of the
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autothermal reformer. Id. As noted in the Decision, “[t]he skilled artisan would
have considered the benefits of using a monolithic catalyst instead of a coated bead
and packed powder catalysts, as recited in Yarrington (FF21), to improve the
reactor throughput over the packed powder catalyst taught by Tonkovich.”
Decision 21.
However, we agree with Patent Owner that the Board Decision
misapprehended that the particular reactor design of Yarrington uses the monolith
catalyst adiabatically, i.e., without heat loss. Request 10. Although Yarrington
teaches that, in the autothermal reformer, the monolithic catalyst is surrounded by
“thermal insulating material 5 to reduce heat losses” and to “provide essentially a
fixed bed, adiabatic reactor” (Decision FF24), there is no suggestion in the
teaching of Yarrington that the monolithic catalyst would function the same, even
in the same reaction, in a reactor design where optimal heat loss is a primary
objective, as taught by Tonkovich. Even if the metal monolith carriers are
described in Yarrington as having better heat transfer than ceramic carriers, the
metal monolithic catalysts are less preferred in the reactor structure of Yarrington,
because Yarrington’s reactor design has the opposite objective of Tonkovich’s
reactor. Decision FF23.
Additionally, we agree with Patent Owner that Tonkovich’s proposed
improvement of a “robust catalyst with engineered microstructures” is insufficient
evidence that the skilled artisan would have considered the use of the monolithic
catalyst taught by Yarrington for Tonkovich’s reactor, when Yarrington teaches the
opposite objective regarding heat transfer to that of Tonkovich. See Decision 22.
The Examiner states that “the reactor vessel disclosed in Example 2 [of
Yarrington] is a preferred embodiment and that other configurations would be
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encompassed by the reference.” Final Action 12. Upon further review, we agree
with Patent Owner (Request 11–12) that the autothermal reformer reactor is the
only reactor described in Yarrington, and Yarrington does not suggest the
suitability of a monolithic catalyst for partial oxidation reactions that are not in
conjunction with a steam reforming reaction in an autothermal reformer.
In Response to Patent Owner’s arguments, the Examiner further states that
“‘individual gas flow passages’ are not the same as a reaction chamber and heat
exchangers.” Ans. 8. Yet, the Examiner’s statement does not explain sufficiently
why the skilled artisan would have used a catalyst designed for adiabatic
conditions in a different type of reactor designed for rapid thermal quenching. We
agree that the claimed invention can only be reached through hindsight
modification of Tonkovich with the monolithic catalyst of Yarrington. In re
Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when the
specific understanding or principal within the knowledge of one of ordinary skill in
the art leading to the modification of the prior art in order to arrive at appellant's
claimed invention has not been explained).
Accordingly, upon review and for the reasons discussed above, we reverse
the Examiner’s rejection of claims 71 and 72 under 35 U.S.C. § 103(a) as
unpatentable over Tonkovich in view of Schubert and Yarrington.
The Request for Rehearing has been considered and is granted to the extent
that we find that it would not have been obvious to combine the monolithic catalyst
of Yarrington with the reactor of Tonkovich. The Request for Rehearing is
otherwise denied. Accordingly, the Request for Rehearing is granted-in-part.

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Requests for extensions of time are governed by 37 C.F.R. § 1.550(c). See
37 C.F.R. §41.52(b).

GRANTED-IN-PART

FOR PATENT OWNER:

BATTELLE MEMORIAL INSTITUTE
Attn: IP Legal Services, K1-53
P.O. Box 999
Richland, WA 99352

FOR THIRD-PARTY REQUESTER:

MCDERMOTT WILL & EMERY LLP
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