Ex Parte 8173834 et al

Patent Trials and Appeals Board

Jan 28, 2016

95002316 - (D) (P.T.A.B. Jan. 28, 2016)

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.
95/002,316 09/14/2012 8173834 37491-00RE 2406
4249 7590 01/28/2016
CAROL WILSON
BP AMERICA INC.
150 West Warrenville Road
MC 200-1W
Naperville, IL 60563
EXAMINER
CAMPELL, BRUCE R
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
01/28/2016 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 TRIAL AND APPEAL BOARD
____________

INVISTA S.à.r.l.
Requester and Respondent

v.

BP Corporation North America Inc.
Patent Owner and Appellant
____________

Appeal 2015-007881
Reexamination Control 95/002,316
Patent 8,173,834 B2
Technology Center 3900
____________

Before CHUNG K. PAK, RICHARD M. LEBOVITZ, and RAE
LYNN P. GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal by the Patent Owner from the
Patent Examiner’s final rejection of claims 14–16 and 20 in the
above-identified inter partes reexamination of United States Patent
8,173,834 B2. The Board’s jurisdiction for this appeal is under
35 U.S.C. §§ 6(b), 314, and 315. We affirm the Examiner’s rejection.
BACKGROUND
The patent in dispute in this appeal is 8,173,834 B2 (“the ’834
Patent”) which issued May 8, 2012. The real party in interest and
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assignee is BP Corporation North America Inc. (Reel/Frame 19848-
485) (“Patent Owner”). Br. 1.
A request for inter partes reexamination of the ’834 Patent
under 35 U.S.C. §§ 311–318 and 37 C.F.R. §§ 1.902–1.997 was filed
on September 14, 2012 by INVISTA S.à.r.l. (“Requester”). Resp’t
Br. 1. Reexamination was ordered on November 27, 2012. The
Action Closing Prosecution was issued November 6, 2013.
Claims 1, 3–11, 13–16, and 18–20 stand finally rejected by the
Examiner. Right of Appeal Notice (“RAN”) (June 14, 2014). Patent
Owner appeals from the Examiner’s final rejection of claims 14–16
and 20 (Br. 2) as obvious under 35 U.S.C. § 103(a) (pre-AIA) in view
of Tomitaka1 and Broeker. 2 RAN 5. We affirm the rejection.
The claimed subject matter of the ’834 Patent is directed to a
process for the manufacture of aromatic carboxylic acids. According
to the ’834 Patent, purified terephthalic acid (“PTA”) and other
aromatic carboxylic acids are “widely used in manufacture of
polyesters, commonly by reaction with components comprising
ethylene glycol, higher alkylene glycols or combinations thereof, for
conversion to fiber, film, containers, bottles and other packaging
materials, and molded articles.” ’834 Patent, col. 1, ll. 18–23. The
’834 Patent teaches that PTA had been made in the prior art “by
catalytically hydrogenating less pure forms of the acids, such as crude
product comprising aromatic carboxylic acid and by-products

1 Tomitaka et al., EP 0 962 442, published, Dec. 8, 1999.
2 Broeker et al, U.S. Patent 6,137,001, issued Oct. 24, 2000.
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generated by liquid phase oxidation of aromatic feedstock.” Id. at col.
2, ll. 4–8. After discussing the prior art, the ’834 patent discloses that
“none of the processes uses liquid condensed from a high pressure
off-gas from a liquid phase oxidation as solvent or other liquid
comprising water in the purification of impure aromatic carboxylic
acids.” Id. at col. 2, ll. 57–61; see also col. 3, ll. 24–32. As
considered in more detail below, this liquid condensation step is
embodied in step (h) of the claimed method.
The ’834 Patent also teaches that the invention provides in
some embodiments “separation as reflux a liquid comprising a
purification mother liquor remaining after recovery of a purified
aromatic carboxylic acid product from a purification reaction
solution.” Id. at col. 4, ll. 51–54. Step (j) of the claimed invention is
directed to this embodiment.
Claim 14 is the only independent claim on appeal and reads as
follows:
14. A process for manufacture of aromatic carboxylic
acids comprising, in steps,

(a) contacting a feed material comprising at least one
substituted aromatic hydrocarbon in which the
substituents are oxidizable to carboxylic acid groups and
gaseous oxygen in a liquid phase oxidation reaction
mixture comprising monocarboxylic acid solvent and
water and in the presence of a catalyst composition
comprising a heavy metal component in a reaction zone
at temperature and pressure effective to maintain a liquid
reaction mixture and to form an aromatic carboxylic acid
and impurities comprising reaction by-products dissolved
or suspended in the liquid phase oxidation reaction
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mixture and a high pressure vapor phase that comprises
solvent monocarboxylic acid, water, unreacted
substituted aromatic hydrocarbon, oxygen gas, and
reaction by-products,

(b) recovering from the liquid phase oxidation reaction
mixture a solid product comprising aromatic carboxylic
acid and impurities comprising reaction by-products;

(c) dissolving or suspending solid product recovered
from the liquid phase oxidation reaction mixture
comprising aromatic carboxylic acid and impurities
comprising reaction by-products in a liquid comprising
water, at least a portion of which comprises a condensate
liquid condensed according to step (h), to form a
purification solution;

(d) contacting the purification solution at elevated
temperature and pressure with hydrogen in the presence
of a hydrogenation catalyst to form a purification liquid
reaction mixture;

(e) recovering from the purification liquid reaction
mixture a solid purified product comprising aromatic
carboxylic acid with reduced levels of impurities and a
liquid purification mother liquor comprising water and
minor amounts of oxidized substituted aromatic
hydrocarbon, hydrogenated derivatives thereof or
combinations thereof;

(f) transferring a high pressure vapor phase from step (a)
comprising solvent monocarboxylic acid, water vapor,
unreacted feed material, oxygen and by-products of the
liquid phase reaction to a separation zone supplied with
reflux liquid and capable of separating solvent
monocarboxylic acid and water in the high pressure
vapor phase;

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(g) separating solvent monocarboxylic acid and water in
the high pressure vapor phase in the separation zone of
elevated temperature and pressure into liquid comprising
solvent monocarboxylic acid and lean in water and a high
pressure gas substantially free of solvent monocarboxylic
acid comprising water, aromatic feed material, by-
products of the oxidation step and a minor amount of
monocarboxylic acid solvent;

(h) transferring a high pressure gas removed from the
separation zone to a condensing zone without treatment
to remove organic impurities and transferring heat
between the pressurized gas and a heat exchange fluid to
condense from the high pressure gas a condensate liquid
comprising water substantially free of organic impurities
and form a high pressure condensing zone exhaust gas;
and

(i) directing at least a portion of the condensate liquid
condensed from the pressurized gas in step (h) to step (c);
and

(j) directing at least a portion of the purification mother
liquor recovered in step (e) to the separation zone such
that reflux liquid supplied to the separation zone
comprises the purification mother liquor.

REJECTION
Independent claim 14 is directed to a process for the
manufacture of aromatic carboxylic acids. The process comprises
steps (a) through (j) and includes: 1) oxidation steps in which a
substituted aromatic hydrocarbon is subjected to oxidation to produce
the aromatic carboxylic acid (step a through c); 2) hydrogenation to
purify the product (steps d and e); distillation (steps f and g); and
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condensation (steps h and i) in which a high pressure gas produced
during distillation is transferred “to a condensation zone without
treatment.”
In step (f), the “high pressure vapor phase” produced during
oxidation (step a) is subjected, “without treatment,” to distillation.
In step (j), the “liquid purification mother liquor” produced
during hydrogenation of step (e) is directed to the separation zone of
the distillation step (g). This step is referred to as “recycling” by the
Examiner and Patent Owner because water and the other components
present in the mother liquor are returned back to the process. RAN 6–
7.
In step (i), the condensate of step (h) is directed to the oxidation
step (c).
The Examiner found that Tomitaka describes substantially all
the steps of the claimed method, but not recycling the “liquid
purification mother liquor” to the separation zone of the distillation
step (g) as recited in step (j). RAN 6. However, the Examiner found
that Broeker describes a process for preparing aromatic carboxylic
acids which is similar to Tomitaka’s process. Id. In Broeker’s
process, the Examiner found that liquid purification mother liquor “is
recycled to the high pressure distillation column (col. 15, line 54 –
col. 16, line 18; col. 18, lines 53–65).” Id. The Examiner stated that
the recycling of the mother liquor “has the advantage of eliminating
the need to deal with the mother liquor as a waste product requiring
treatment, as well as allowing further recovery of product from the
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mother liquor.” Id. Based on this reasoning, the Examiner concluded
that it would have been obvious to one of ordinary skill in the art to
modify Tomitaka by “recycling the mother liquor remaining after
removal of solid aromatic carboxylic acid product into the distillation
column as taught by Broeker.” Id. at 7.
Patent Owner contends that the skilled worker would not have
routed the mother liquor to the distillation column as claimed because
Tomitaka teaches that it would lead to clogging due to the
accumulation of solids in the distillation column. Br. 9. In contrast,
Patent Owner argues that, to overcome the proclaimed clogging
problem, Tomitaka teaches that the mother liquor is first treated to
remove impurities, while the claim uses the “liquid purification
mother liquor” directly from step (e) with no treatment. Id. at 10.
Patent Owner acknowledges that Broeker teaches that
“returning a mother liquor from a separation apparatus to a separation
unit (i.e., distillation column) allows for the recycle of intermediates
and byproducts in the mother liquor to the oxidation reactor, and that
such a system reduces waste treatment costs, (Broeker at col 18, lines
57-65).” Id. at 12. See step (j) of claim 14. However, Patent Owner
contends that Broker “requires the additional equipment of a catalytic
oxidation unit, or equivalent, to do so” prior to condensing the high
pressure gas from the distillation step. Id. at 12–13. See step (f) of
claim 14 which requires that the high pressure gas be used “without
treatment.”
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In other words, Patent Owner contends that, when the mother
liquor is recycled to the distillation column as in step (j) of claim 14,
Broeker teaches that the high pressure gas produced during distillation
step (g) must be treated to remove impurities prior to condensation in
contrast to step (h) of claim 14 which uses the gas without treatment.
The principal issue in this rejection is therefore would it have
been obvious to one of ordinary skill in the art to modify Tomitaka,
including utilizing the high pressure gas from the distillation column
with no treatment prior to condensation (step h of the claimed
method), by recycling the mother liquor into the distillation column,
as described by Broeker (i.e., step j of the claimed method). Patent
Owner also provided evidence of nonobviousness to establish that the
modifications would not have been obvious to one of ordinary skill in
the art.

Discussion
Step (g) of claim 14 involves “separating solvent
monocarboxylic acid and water” into the solvent and a “high pressure
gas.” In step (h) of the claim, the high pressure gas is transferred “to a
condensing zone without treatment to remove organic impurities.”
According to Patent Owner, Broeker requires treatment of the high
pressure gas. Br. 10. However, Patent Owner’s contention is not
supported by a preponderance of the evidence in this record.
Broeker specifically teaches:
Significantly, the gas exiting the separation apparatus is
still at a high pressure and is, therefore, a valuable source
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of energy. While this offgas from the separation
apparatus can be sent to a means for recovering energy,
e.g. an expander, it is preferable to first remove corrosive
and/or combustible byproduct materials from the high
pressure offgas before it is directed to an expander or
other means for energy recovery. While any means for
removing combustible materials from the offgas is
suitable, for example, a thermal oxidizer, a preferred
method is to use a catalytic oxidation apparatus wherein
the offgas is contacted with a suitable catalytic material
at high temperature and high pressure in the presence of
air or other source of molecular oxygen, and the
corrosive and combustible byproduct materials in the
offgas are catalytically oxidized to environmentally
compatible materials. Such a catalytic oxidation unit can
reduce or eliminate through oxidation, any residual
oxidation reaction solvent present in the offgas, and it
can oxidize a byproduct such as methyl bromide.
However, in the method of this invention, the separation
apparatus used removes most of the reaction solvent from
the reaction offgas. Thus, the offgas entering the offgas
catalytic oxidation unit has a low level of reaction solvent
so the load on the catalytic oxidation unit is small.
Broeker, col. 13, l. 66 to col. 14, l. 22 (emphasis added).
This passage teaches that is preferable to treat the high pressure
gas to remove corrosive and combustible materials, but it does not
state that such treatment is required as asserted by Patent Owner. In
an attempt to support their contention, Patent Owner relies on a
declaration by Thomas M. Bartos, Ph.D., a co-inventor of Broeker
(hereinafter, “Bartos Decl.”; executed on December 6, 2013).
Dr. Bartos testified in his declaration:
Broeker discloses the impurities from the gaseous
effluent stream from the distillation column 20 must be
removed by a catalytic oxidation unit or equivalent, and
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preferably before the stream is directed to an expander
or other energy recovery means. (Broeker at col. 14, lines
1–10).
Bartos Decl. ¶ 55.
The disputed passage from Broeker (see above) reads: “While
this offgas can be sent to a means for recovering energy, e.g. an
expander, it is preferable to first remove corrosive and/or combustible
byproduct materials from the high pressure offgas before it is directed
to an expander or other recovery means.” Broeker, col. 14, ll. 1-3
(emphasis added). There is no disclosure in this sentence, or the
disclosure that follows it, that the byproducts, if not first removed
prior to being directed to the expander, are removed in another step
and that they “must be removed.” To the contrary, the sentences
indicates that sending the offgas to an expander directly is a viable,
even though it is a less preferred, alternative. Consequently, the
testimony by Dr. Bartos on this point is not persuasive.
Patent Owner contends that if the mother liquor is not treated
prior to being recycled to the distillation column, then the high
pressure gas from the column must be treated prior to condensation, a
step excluded by step (h) of claim 14. Br. 14. Once again, Patent
Owner relies on the testimony of Dr. Bartos:
As a co-inventor of Broeker, it is my experience that
neither my co-inventors nor myself considered it possible
to eliminate treatment of both the overhead gaseous
effluent, in Broeker, and the treatment of the purification
“mother liquor" as in the Tomitaka Publication …
Bartos Decl. ¶ 53.
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In my opinion, a person having ordinary skill in the art
could have no expectation that both these steps could be
removed while maintaining a condensate liquid of
sufficient purity from the overhead gas from the
separation zone, to be used in purifying the aromatic
carboxylic acid product. One of ordinary skill in the art
would expect that removing the catalytic oxidation unit
of Broeker or the purification steps in the Tomitaka
Publication would render a mother liquor stream too high
in impurities for the purification process to
accommodate.
Id. at ¶ 54.
Dr. Bartos does not provide adequate factual basis for this
opinion. In contrast, as admitted by Patent Owner, Broeker teaches
recycling the mother liquor, without treatment, to the distillation
column:
Mother liquor from separation apparatus 180 which
comprises water, dissolved and suspended purified
terephthalic acid, and various intermediate and by-
product compounds, is recycled to the top of high
pressure distillation column 20 through pipe 200. Return
of mother liquor from separation apparatus 180 to high
pressure distillation column 20 allows for recycle of
intermediates and by-products in the mother liquor to the
oxidation reactor . . .
Broeker, col. 18, ll. 53–60. While Broeker teaches subjecting the high
pressure offgas to treatment, Broeker teaches this as preferable and
therefore not necessary.
We have considered another declaration provided by Patent
Owner, executed by Xi Li, Ph.D., which also says that it would not be
obvious to omit the catalytic oxidation unit of Broeker when recycling
mother liquor. First Li Decl. ¶ 55–59 (executed January 26, 2013).
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Dr. Li, as does Dr. Bartos, testified the skilled worker would have
been motivated to retain the catalytic oxidation reactor from Broeker
because of the teaching in paragraph 6 of Tomitaka that “a distillation
column in the separation zone ‘may tend to suffer from clogging due
to accumulation of the remaining carboxylic acid crystals’ if returning
the mother liquor stream to the separation zone as liquid reflux.” First
Li Decl. ¶ 56; Bartos Decl. ¶ 51.
Neither Dr. Bartos nor Dr. Li explain how using the catalytic
oxidation reactor, when condensate is returned to the column, would
alleviate column clogging due to carboxylic acid crystals. As testified
by Graham McCartney3 in a declaration provided by Requester, the
purpose of the catalytic oxidation is to remove organic impurities
from the high pressure offgas effluent. First McCartney Decl. ¶ 17
(executed February 22, 2013).
Moreover, as stated by Mr. McCartney (id.), Tomitaka teaches
that adding condensed water from the condensers avoids “stuffing or
clogging of the distillation column.” Tomitaka ¶ 60. Thus, the
evidence supports a finding that the skilled worker would have looked
to solve any potential clogging problem in the distillation column
from recycling the mother liquor “by connecting the distillation
column directly to a condensing system as described by Tomitaka.”
First McCartney Decl. ¶ 17.

3 Mr. McCartney states that he has been employed as a chemical
engineer for over 20 years. First McCartney Decl. ¶ 17. Based on his
education and experience, we find that he is qualified to testify as to
the matters in his declaration.
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Furthermore, there is no persuasive evidence that, if mother
liquor is recycled in Tomitaka’s process as described in Broeker, the
skilled worker would have found it necessary to treat the high
pressure gas from the distillation column prior to condensation. Dr.
Li’s testimony that a person having ordinary skill in the art would
have had reason to “retain the catalytic oxidation reactor 40, rather
than remove it from the process, in light of the known issue in the art
that a distillation column in the separation zone ‘may tend to suffer
from clogging due to accumulation of the remaining carboxylic acid
crystals’ if returning the mother liquor stream to the separation zone
as liquid reflux. Tomitaka Publ. at ¶ 6”, and Dr. Bartos’ substantially
identical testimony, is insufficient because Broeker teaches the
catalytic oxidation unit is preferred and neither Dr. Li nor Dr. Bartos
provide evidence that the catalytic oxidation reactor is “interrelated”
to the mother liquor recycling. Li. Decl. ¶¶ 55–57; Bartos Decl. ¶ 50.
Specifically, it has not been established that failing to treat the
high pressure gas would result in clogging of the column when
combined with mother liquor recycling. Patent Owner contends that
“one of ordinary skill in the art would appreciate that combining the
Tomitaka Publication with Broeker – without the catalytic oxidation
unit or other mother liquor impurity removal steps – would produce a
purification mother liquor stream with concentrations of impurities
too high for the use of the mother liquor as a reflux stream” (Br. 14),
but does not provide evidence to support this argument. We agree
with the Examiner that “neither Li nor Bartos explain . . . what effect
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these substances [in the untreated condensed offgas] would have on
the properties of the purification mother liquor that would render it
unsuitable for recycling directly back to the distillation column.”
RAN 17. As already stated, the preferred language in Broeker (and
Abrams) indicates that the purification of the high pressure gas before
condensation was a dispensable step.
Nonetheless, even if it is correct that the most advantageous
configuration is one where recycling the mother liquor to the
distillation column is accompanied by a step in which a high press gas
prior is returned to a condensation zone after treatment with the
catalytic oxidation unit of Broeker, this does not mean that the
allegedly less preferred process of omitting the oxidation unit is
unobvious. It would have been obvious to modify Tomitaka’s process
by recycling the mother liquor to the distillation column as taught by
Broeker and further adding condensed water from the offgas to the
distillation column, without treatment, based on Tomitaka’s teaching
of refluxing water from the condensers back to the distillation column
to avoid clogging the column. Tomitaka ¶ 60; First McCartney Decl.
¶ 17. A “finding that prior art as a whole suggests the desirability of a
particular combination need not be supported by a finding that the
prior art suggests that the combination claimed by the patent applicant
is the preferred, or most desirable, combination.” In re Fulton, 391
F.3d 1195, 1200 (Fed. Cir. 2004).
Moreover, even if combining such steps has some
disadvantages, a teaching that a result would be inferior or less
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desirable is not a teaching away unless the use “would render the
result inoperable.” In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1381 (Fed. Cir. 2007). “[J]ust because better alternatives exist
in the prior art does not mean that an inferior combination is inapt for
obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir.
2012). We have not been directed to evidence in this record that one
of ordinary skill in the art would have reasonably expected the
combination of the two steps as claimed would not work.
Patent Owner contends that Tomitaka teaches away from
recycling the mother liquor from step (e) because:
At paragraph 6, the Tomitaka Publication proclaims that
it is “problematic ... that the mother liquor separated in
the purification step is recycled to the distillation column,
wherein the column may tend to suffer from clogging due
to accumulation of the remaining carboxylic acid
crystals.” This teaching in the Tomitaka Publication, that
mother liquor recycle leads to clogging due to the
accumulation of solids in the distillation column, stands
in stark contrast to the process of the Appealed Claims
which teach exactly what the Tomitaka Publication
teaches away from . . .
Br. 9.
However, Requester provided evidence that one of ordinary
skill in the art would have had reason to recycle the mother liquor.
Specifically, Mr. McCartney cited two publications, “Abrams and
Jeffery (the references discussed by Tomitaka),” which Mr.
McCartney testified “discuss recycling a mother liquor obtained from
purifying an aromatic carboxylic acid product as a reflux to the
distillation column, emphasize the advantages of doing so, and
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provide solutions to the potential problems associated with solids that
might otherwise foul the distillation column.” First McCartney Decl.
¶ 10; see also ¶ 9 (citing Tomitaka ¶ 5, which references
WO96/11899 (“Abrams”) and WO97/27168 (“Jeffery”)). Mr.
McCartney also stated:
Jeffery . . . discusses the advantages of “recycling the
aqueous mother liquor separated from the purified
carboxylic acid.” 11 (Jeffery p. 7 line 28.) Jeffery
describes that “a major fraction of the aqueous mother
liquor will be recycled to the separation column ...
preferably as reflux.” (Id. lines 37-38.) Jeffery explains
that the mother liquor can be treated by cooling or
evaporation to recover crystals of less pure aromatic
carboxylic acid or that the “primary mother liquor
recovered from the purification reaction may be recycled
to the separation column without cooling . . . to any
significant extent although it may be filtered before
introduction into the separation column in order to
remove any suspended fines." (Id. p. 8 lines 1-9.)
Therefore Jeffery, like Abrams, discusses that a mother
liquor can be cooled to remove dissolved compounds that
might foul a distillation column, but also describes an
alternative of recycling the primary mother liquor
without cooling.

First McCartney Decl. ¶ 12 (emphasis added). Thus, Mr.
McCartney’s testimony about the obviousness of returning the mother
liquor to the distillation column has an adequate factual basis.
Patent Owner supplies testimony by Xi Li, Ph.D. that both
Abrams and Jeffery also removed impurities through the use of a
catalytic combustion unit. Supplemental Li Decl. ¶¶ 54–55 (executed
December 3, 2013). However, Abrams has similar disclosure to
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Broeker in which it is stated that offgas may be sent directly to an
expander, although removal of byproducts first is “preferrable.”
Abrams 9:27-33. When there are two ways of utilizing the high
pressure gas – either untreated or treated, as in Broeker’s and Abrams’
preferred embodiments – both embodiments would have been obvious
to one of ordinary skill in the art, even if one is preferred. See Merck
& Co v. Biocraft Laboratories, 874 F.2d 804, 807 (Fed. Cir.
1989)(“all disclosures of the prior art, including unpreferred
embodiments, must be considered.”)(quoting In re Lamberti, 545 F.2d
747, 750 (CCPA 1976)). Disclosed examples and preferred
embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442,
446 n.3 (CCPA 1971).
In addition, claim 14 recites “directing at least a portion of the
purification mother liquor recovered in step (e) to the separation zone
such that reflux liquid supplied to the separation zone comprises the
purification mother liquor.” Thus, the claim does not require a
specific quantity of mother liquor to be directed to the separation
zone, so claim 14 allows for the remainder, which could be most of it,
to be discarded from the system. Patent Owner has not established
that any quantity of mother liquor would result in clogging “due to
accumulation of the remaining carboxylic crystals.” Tomitaka ¶ 6.
As noted by the Examiner, if clogging were a problem, “it would be
obvious to only recycle as much purification mother liquor as the
distillation column could accommodate.” RAN 16.
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Secondary considerations
Factual considerations that underlie the obviousness inquiry
include the scope and content of the prior art, the differences between
the prior art and the claimed invention, the level of ordinary skill in
the art, and any relevant secondary considerations. Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966). Relevant secondary
considerations include commercial success, long-felt but unsolved
needs, failure of others, praise, and unexpected results. KSR Int'l Co.
v. Teleflex Inc., 550 U.S. 398, 406 (2007); Institut Pasteur &
Universite Pierre et Marie Curie v. Focarino, 738 F.3d 1337, 1344
(Fed. Cir. 2013); In re Soni, 54 F.3d 746 (Fed. Cir. 1995). Secondary
considerations are “not just a cumulative or confirmatory part of the
obviousness calculus but constitute [] independent evidence of
nonobviousness . . . [and] enable [] the court to avert the trap of
hindsight.” Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1358
(Fed. Cir. 2013) (internal quotation marks and citations omitted).
“This objective evidence must be ‘considered as part of all the
evidence, not just when the decisionmaker remains in doubt after
reviewing the art.’” Transocean Offshore Deepwater Drilling, Inc. v.
Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012)
(internal citations omitted).
Patent Owner contends that objective evidence of
nonobviousness supports the patentability of the claims. Br. 15.
Patent Owner contends that the practice of the claimed invention has
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led to commercial success which resolves a long-felt need in the
industry. Id. at 15–16. As evidence, Patent Owner relied upon the
declaration of Dr. Bartos.
Dr. Bartos asserts that Patent Owner produces approximately
20% of purified terephthalic acid (PTA) worldwide. Bartos Decl. ¶
61. PTA is an aromatic carboxylic aid. Dr. Bartos states that Patent
Owner has two plants located in Zhuhai, China that are owned by BP
Zhuhai Chemical Company and which produce PTA. Id. at ¶ 62.
According to Dr. Bartos, the PTA plant in Zhuhai known as Zhuhai 1
began producing PTA in 2003, before the filing date of the ’834
patent and does not operate using the process of the ’834 patent. Id. at
¶¶ 63–64. The PTA plant in Zhuhai known as Zhuhai 2, on the other
hand, began producing PTA in 2008. Id. at ¶ 64. Dr. Bartos testified
that Zhuhai 2 “operates using the process described in the ’834
Patent.” Id. Dr. Bartos further testified in his declaration that “the
technology described in the ’834 Patent” allows Zhuhai 2 to operate at
only 59% of the variable cost of Zhuhai 1. Id. at ¶ 65. Dr. Bartos
states that the “difference in variable costs has, under the current
market, allowed Zhuhai 2 to operate on-line for essentially 100% of
the time for the current year,” while the “older technology in Zhuhai 1
has been shut down 39% of the time over the same period due to
insufficient profitability.” Id. Dr. Bartos concludes that such
“improvements described in the ’834 patent” constitute commercial
success. Id. at ¶ 67.
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“For objective evidence to be accorded substantial weight, its
proponent must establish a nexus between the evidence and the merits
of the claimed invention.” In re GPAC, Inc., 57 F.3d 1573, 1580
(Fed. Cir. 1995). Evidence of commercial success, or other secondary
considerations, is only significant if there is a nexus between the
claimed invention and the commercial success and must be due to the
merits of the claimed invention beyond what was readily available in
the prior art . Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–
1312 (Fed. Cir. 2006). “[I]f the feature that creates the commercial
success was known in the prior art, the success is not pertinent.”); J.T.
Eaton & Co., Inc. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571
(Fed. Cir. 1997) (“[T]he asserted commercial success of the product
must be due to the merits of the claimed invention beyond what was
readily available in the prior art.”) (citing Richdel, Inc. v. Sunspool
Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983) (Patentee failed to show
that “such commercial success as its marketed system enjoyed was
due to anything disclosed in the patent in suit which was not readily
available in the prior art.”)).
In this case, it has not been established that the increase in
profitability described in the Bartos Declaration was due to the merits
of the claimed invention. The asserted commercial success is based
on a comparison between the performance of a plant that uses the
process described in the ’834 patent and one that does not. Dr. Bartos
testified that the Zhuhai 2 plant using the ’834 patent technology is
on-line 100% of the time, but the Zhuhai 1 plant, which does not use
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the technology, is shut down 39% of the time due to insufficient
profitability. For this evidence to be persuasive, the asserted
profitability must be attributable to the merits of the claimed invention
and not a feature which was known in the prior art.
Dr. Bartos did not offer an explanation of the process
performed in the Zhuhai 1 plant. An explanation is necessary because
the improvement in profitability4 observed in Zhuhai 2 is with respect
to the process practiced in Zhuhai 1. While it must be presumed5 that
the 59% reduction in operating cost obtained in Zhuhai 2 is due to the
claimed process, without knowing what process was practiced in
Zhuhai 1, it cannot be said that the improvement was due to the merits
of the invention, rather than a feature which was known in the prior
art. Specifically, Patent Owner acknowledges that the claimed
process is similar to the processes described in Tomitaka and Broeker,
differing only in that the claim recycle mother liquor to the separation
zone (step j) and transfers high pressure gas without treatment to the
condensing zone (step h). If Zhuhai 1 operated with a process
completely different from that of claim 14, Tomitaka, or Broeker, it
cannot be concluded that the success of Zhuhai 2 was due to steps (j)
and (h) of claim 14, rather than more generically to the prior art

4 For the sake of argument, we have assumed that the asserted
profitability is a valid measure of commercial success.
5 Brown & Williamson, 229 F.3d 1120, 1130 (Fed. Cir. 2000) (stating
the presumption that commercial success is due to the patented
invention applies “if the marketed product embodies the claimed
features, and is coextensive with them.”).
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process of Tomitaka or Broeker involving, e.g., oxidation,
hydrogenation, condensation, and recycling of the mother liquor. Dr.
Bartos did not identify the differences between the process practiced
in Zhuhai 1 and Zhuhai 2.
Moreover, as noted by the Examiner, “the advantages of
recycling mother liquor, as enumerated by Broeker, would lead one to
expect cost savings due to increasing the amount of product recovered
and decreasing the amount of waste (requiring treatment) produced.”
RAN 19. While Dr. Bartos testified that “the technology
improvements described in the ‘834 Patent” are responsible for the
“commercial success” and “address [the] long-felt need by reducing
operating costs in the Zhuhai 2 PTA plant,” he did not provide
sufficient evidence that the “success” is due to the claimed
combination of recycling and condensing steps, rather than just the
recycling of the mother liquor, which had been described in the prior
art for its advantages.
Consequently, in view of these deficiencies, we conclude that
the evidence of commercial success has little probative weight for the
purpose of demonstrating nonobviousness.
Patent Owner’s contention that commercial success resolves a
long-felt need in the industry also has little probative weight. Aside
from lacking a nexus between the evidence and the merits of the
claimed invention as discussed supra, Patent Owner’s reliance on
commercial success as a basis for resolving a long-felt need fails to
show that the need was a persistent one that was recognized by those
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of ordinary skill in the art, which a solution was not known. See In re
Gershon, 372 F.2d 535, 538 (CCPA 1967); see also In re Piasecki,
745 F.2d 1468, 1475 (Fed. Cir. 1984)(Patent Owner must present
affidavits or other factual evidence of “a failure of others to provide a
feasible solution to [a] long-standing problem” and evidence “that
experts did not foresee” the solution claimed.) As discussed supra,
the prior art teaches that recycling the mother liquor, with or without
other steps, was known at the time of the invention.
After considering the evidence of record, including the cited
publications and declarations, we conclude that claim 14 would have
been obvious to one of ordinary skill in the art at the time of the
invention. Claims 15, 16, and 20 were not argued separately and fall
with claim 14.

VII. TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a) (1), the “[p]arties to
the appeal may file a request for rehearing of the decision within one
month of the date of: . . . [t]he original decision of the Board under
§ 41.77(a).” A request for rehearing must be in compliance with
37 C.F.R. § 41.79(b). Comments in opposition to the request and
additional requests for rehearing must be in accordance with
37 C.F.R. § 41.79(c) & (d), respectively. Under 37 C.F.R. § 41.79(e),
the times for requesting rehearing under paragraph (a) of this section,
for requesting further rehearing under paragraph (d) of this section,
and for submitting comments under paragraph (c) of this section may
not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983
for an inter partes reexamination proceeding “commenced” on or
after November 2, 2002 may not be taken “until all parties’ rights to
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request rehearing have been exhausted, at which time the decision of
the Board is final and appealable by any party to the appeal to the
Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 7,
July 2008).
In the event neither party files a request for rehearing within the
time provided in 37 C.F.R. § 41.79, and this decision becomes final
and appealable under 37 C.F.R. § 41.81, a party seeking judicial
review must timely serve notice on the Director of the United States
Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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FOR PATENT OWNER:
Carol Wilson
BP America Inc.
150 West Warrenville Road
MC 200-1W
Naperville, IL 60563

FOR THIRD-PARTY REQUESTER:
Dorothy P. Whelan
INVISTA S.a.r.l.
Fish Richardson, P.C.
P.O. Box 1022
Minneapolis, Minnesota 55440-1022