Ex Parte Buijs et al

Patent Trial and Appeal Board

Jul 29, 2016

13267948 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/267,948 10/07/2011 Andre BUIJS
23632 7590 08/02/2016
SHELL OIL COMPANY
PO BOX 2463
HOUSTON, TX 77252-2463
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TS2188(US) 7129
EXAMINER
PREGLER, SHARON
ART UNIT PAPER NUMBER
1772
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
USPatents@Shell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRE BUIJS and CHIPPLA OLIVER V ANDU
Appeal2015-000941
Application 13/267,948
Technology Center 1700
Before BRADLEY R. GARRIS, CHRISTOPHER L. OGDEN,
and MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal from the Examiner's final rejection of claims 1-10
and 12. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
1 Appellants identify Shell Oil Company as the Real Party in Interest. App.
Br. 2.
Appeal2015-000941
Application 13/267,948
The Claimed Invention
Appellants' disclosure relates to a process for the preparation of
hydrocarbons, in particular gasolines and aromatic hydrocarbons. Spec. 1,
11. 4, 5. Claim 1 is representative of the claims on appeal and is reproduced
below from the Claims Appendix to the Appeal Brief (App. Br. 5):
1. A process for the preparation of hydrocarbons comprising the
steps of:
(a) contacting a mixture of carbon monoxide and hydrogen at
an elevated temperature and pressure with a mixture of a
methanol synthesis catalyst and a methanol conversion catalyst
thereby forming Cs+ hydrocarbons;
(b) separating at least part of the Cs+ hydrocarbons as obtained
in step (a) into a light stream and a heavy durene-rich stream;
(c) subjecting at least part of the heavy durene-rich stream to
a thermal hydrodealkylation treatment in the presence of
hydrogen to obtain a stream of hydrocarbons having a reduced
durene content; and
( d) mixing at least part of the light stream as obtained in step
(b) with at least part of the stream of hydrocarbons having a
reduced durene content as obtained in step ( c).
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Myers us 3, 178,485 Apr. 13, 1965
Chester et al., US 4,387,261 June 7, 1983
(hereinafter "Chester")
Chang et al., US 4,188,336 June 5, 2003
(hereinafter "Chang")
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Appeal2015-000941
Application 13/267,948
The Rejection
On appeal, the Examiner maintains the following rejection:
Claims 1-10 and 122 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chang in view of Chester and Myers.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejection for the reasons set forth in the Answer, which we adopt as our own.
Nevertheless, we highlight and address specific findings and arguments for
emphasis as follows.
Appellants argue claims 1-10 and 12 as a group. We, therefore, select
claim 1 as representative of this group, and the remaining claims stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that the
combination of Chang, Chester, and Myers suggests all of claim 1 's steps
and vvould have rendered claim l obvious. Ans. 2--4.
Appellants argue that the Examiner's rejection should be reversed
because "Myers predates Chang and Chester by about 15 years" and "if it
had been so obvious and advantageous to substitute the thermal
hydrodealkylation of Meyers for catalytic hydrodealkylation, Chang and/or
Chester would have made such a substitution." App. Br. 3. Appellants also
argue that "Chang and Chester and Meyers do not disclose nor suggest the
2 We have corrected the claims on appeal set forth in the Examiner's
Statement of Rejection (Ans. 2) to reflect that claim 11 has been canceled.
See Advisory Action dated February 21, 2014.
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Appeal2015-000941
Application 13/267,948
invention of amended claim 1 in which the durene content is reduced
through a thermal hydrodealkylation process." Id.
We are not persuaded by Appellants' arguments. Appellants'
argument regarding whether "Chang and/or Chester would have made such a
substitution" (App. Br. 3) is unpersuasive because Appellants do not apply
the appropriate test for determining obviousness. Contrary to what
Appellants argue, the test for obviousness is not what Chang and/or Chester
would have done based on the individual teachings of Myers. Rather, the
test is what one of ordinary skill in the art would have done based on the
combined teachings of the references. In re Keller, 642 F.2d 413, 425
(CCP A 1981) ("[T]he test [for obviousness] is what the combined teachings
of the references would have suggested to those of ordinary skill in the
art."); see also In re Kleinman, 484 F.2d 1389, 1392 (CCPA 1973) ("While
it is true that the hypothetical person of ordinary skill in the art against
whose knowledge the question of obviousness is weighed is legally
presumed to know all of the relevant art, In re Boyer, 363 F.2d 455, 53
CCP A 1497 ( 1966), there is no presumption, rebuttable or not, that the
holder of a patent had constructive or actual knowledge of that same art
when he made the invention.").
Moreover, based on the record before us, the Examiner's finding that
the combination of Chang, Chester, and Myers suggests all of the steps of
claim 1, including that the durene content is reduced through a thermal
hydrodealkylation process, and stated rationale for why one of ordinary skill
would have combined the teachings of these references to arrive at
Appellants' claimed invention, as set forth in the Answer at pages 2 through
4, are supported by a preponderance of the evidence and based on sound
technical reasoning. Chang, col. 3, 11. 6-26, Example 1, Table II; Chester,
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Appeal2015-000941
Application 13/267,948
col. 3, 11. 44--66, col. 4, 11. 5-23, Table at col. 4, 11. 24--49; Myers, col. 1, 11.
18-21, 30-35, col. 3, 1. 9.
Appellants' conclusory arguments that "Myers predates Chang and
Chester by about 15 years" and that "Chang and Chester and Myers do not
disclose nor suggest the invention of amended claim 1" (App. Br. 3), without
more, are unpersuasive and insufficient to rebut or otherwise establish
reversible error in the Examiner's findings and conclusions in this regard. In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); cf also In re Lovin, 652
F.3d 1349, 1356-57 (Fed. Cir. 2011) (holding that a "naked assertion" that
the references fail to disclose or suggest a claim limitation is not an
argument in support of separate patentability).
Accordingly, we affirm the Examiner's rejection of claims 1-10 and
12 under 35 U.S.C. § 103(a) as unpatentable over the combination of Chang,
Chester, and Myers.
DECISION/ORDER
The Examiner's rejections of claims 1-10 and 12 under 35 U.S.C.
§ 103(a) are affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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