Ex Parte Kabu et al

Patent Trial and Appeal Board

Mar 7, 2013

10564503 (P.T.A.B. Mar. 7, 2013)

UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/564,503 01/13/2006 Y asuhiro Kabu
22850 7590 03/11/2013
OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
UNITED STA TES 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.
284585USOPCT 8831
EXAMINER
GAKH, YELENA G
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
03/11/2013 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):
patentdocket@oblon.com
oblonpat@oblon.com
jgardner@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
PA TENT TRIAL AND APPEAL BOARD
Ex parte MITSUBISHI RA YON CO., LTD.
(Application 10/564,503)
Appeal2012-001756
from Technology Center 1700
HEARD: 5 March 2013
Before BRADLEY R. GARRIS, RICHARD TORCZON and
BEVERLY A. FRANKLIN, Administrative Patent Judges.
TORCZON, Administrative Patent Judge.
DECISION ON APPEAL
The appellant (Mitsubishi) seeks relief from the rejection of claims 1, 3, 4
and 6-10. We affirm.
Appeal2012-001756 Application 10/564,503
OPINION
INTRODUCTION
The disclosed invention and claims
Mitsubishi discloses a method for supplying reaction gases in a catalytic gas-
phase oxidation reaction. Claim 1, one of two independent claims, defines the
invention as: 1
A method for supplying reaction gases in a catalytic gas-phase
oxidation reaction in which at least a material to be oxidized and a gas
containing molecular oxygen are mixed and the resultant mixture is
supplied to a catalytic gas-phase oxidation reactor,
wherein a feed rate of the material to be oxidized and a feed
rate of the gas containing molecular oxygen are adjusted so that when
a composition of a gas at the inlet of the catalytic gas-phase oxidation
reactor is changed from a reactive composition A point, which is
the concentration of the material to be oxidized: R(a),
and
the concentration of oxygen: O(a)
represented by plotting a concentration of the material to
be oxidized and a concentration of oxygen in the gas at said
inlet
to a reactive composition B point, which is
the concentration of the material to be oxidized: R(b ),
and
the concentration of oxygen: O(b ),
with a proviso that
the composition A point and the composition B point are
compositions outside a range in which the material to be
1 Br. 8 (Claims Appendix). All claim language in this opinion comes from the
claims appendix although indenting has been added as required in 37 C.F.R.
§ l.75(i).
2
Appeal2012-001756 Application 10/564,503
oxidized and oxygen possibly react to cause explosion, which
range is an explosion range, and
R(a) i- R(b) and O(a) i- O(b),
compositions on the way of the change from the composition A
point to the composition B point fall outside the explosion range,
wherein the material to be oxidized is isobutylene, tertiary butyl
alcohol or methacrolein,
wherein one of the feed rates of the material to be oxidized and
the gas containing molecular oxygen is adjusted in advance by
increasing it or decreasing it to the direction away from the explosion
range and then the other feed rate is adjusted by increasing it or
decreasing it to reach to the composition B point so that the
compositions on the way of the change from the composition A point
to the composition B point fall outside the explosion range.
The limitations requiring increasing a feed rate or decreasing it would be
met by simply decreasing the feed rate. 2 The claim does not exclude a decrease to
the point where reaction tapers off as reactants are consumed or even ceases
entirely.
Mitsubishi contends that "reactive composition" excludes a zero
concentration because there would be nothing reacting. 3 In full, the claim says
"reactive composition [ x] point", which defines points on a concentration plot, not
actual compositions. The graph includes zero points (see figure below at 5).
2 E.g., In re Wilson, 312 F .2d 449, 454 n.8 (CCP A 1963) (contrasting use of "or"
and "and" in claims).
3 Br. 6.
3
Appeal2012-001756 Application 10/564,503
The rejection
On appeal, the examiner maintains a rejection against all of the pending
claims, finding that a published patent application (Hammon)4 had anticipated5
them all. While Mitsubishi notes that claim 6 is directed to a computer-readable
medium rather than to a method per se, Mitsubishi does not rely on limitations
specific to any of the claims to argue for their separate patentability.
Consequently, we review the rejection in terms of claim 1. 6
FACTS AND FINDINGS
[ 1] Hammond discloses a process for the safe operation of a continuously
operated heterogeneously catalyzed gas-phase partial oxidation of at least one
organic compound in an oxidation reactor whose feed gas mixture comprises, in
addition to the organic compound to be partially oxidized and molecular oxygen
as an oxidizing agent, at least one diluent gas substantially inert under the
conditions of a heterogeneously catalyzed gas-phase partial oxidation, in which
a cut-out mechanism is used for preventing the oxidation reactor from being fed
with a feed gas mixture whose composition is an explosive one. 7
[2] Hammon teaches that feed gases include isobutene, tert-butanol and
methacrolein. 8
We note that isobutene is an alternate name for isobutylene. 9
4 U. Hammon et al., Safe operation of a continuous heterogeneously catalyzed gas-
phase partial oxidation of at least one organic compound, US 2004/0015012 Al
(filed 12 June 2004). We note that the firm of record in this appeal was also the
firm of record for Hammon's prosecution.
5 35 U.S.C. 102(e).
6 C. W. Zumbiel Co. v. Kappas, 702 F.3d 1371, 1378 n.2 & 1381 n.4 (Fed. Cir.
2012).
7 Hammon ,-i 000 1.
8 Id. at ,-i,-i 0011 & 0144; claim 2.
9 IUPAC: 2-Methylpropene.
4
Appeal2012-001756 Application 10/564,503
We note that tert-butanol is an alternate name for tertiary butyl alcohol. 10
[3] Hammon teaches the use of nonreactive, nonflammable diluent gases such as
carbon dioxide, water, nitrogen and noble gases. 11
[4] Hammon teaches using an explosion diagram (or plot) as the basis of a
h . 12 computer cut-out mec amsm.
[5] For example, Figure 1 (right)
shows an explosion diagram for a
propylene and oxygen-nitrogen
gas mixture, in which the x-axis ·rn,
8
gives the percent propylene and
f~
~
,,
the y-axis, the percent oxygen 4
'
(with the balance being nitrogen), 2
~-i
0
where the hatched area is the 0 4 6 ·10
explosive region and the solid line is the explosion limit. 13
[ 6] Hammon teaches that operation may occur with the reactant concentrations
within the expiosion iimit, but preferabiy starts and is continuousiy maintained
outside the explosion limit. 14
[7] During continuous operation, a cut-out mechanism prevents the reactants
from migrating inside the explosion limit. 15
[8] In a simple embodiment, Hammon notes that in Figure 1, the explosion limit
is above 2% propylene so explosion may be simply avoided by maintaining the
propylene volume below 2%. 16
10 IUPAC: 2-Methylpropan-2-ol.
11 Hammon ,-i,-i 0004, 0008 & 0022.
12 Id., abstract.
13 Id. at ,-i,-i 0024-26 (percentage by volume).
14 Id. at ,-i,-i 0029-31.
15 Id. at ,-i,-i 0032-33.
5
·12
Appeal2012-001756 Application 10/564,503
[9] Hammon teaches that the cut-out mechanism simply cuts off the propylene
feed whenever it approaches 2%. 17
[1 O] Hammon reports that the art recognized that this simple expedient is
unsatisfactory because it limits the propylene feed too much and improved upon
it by maintaining the oxygen concentration below the limit (about 10% in
Figure 1) instead. 18
[ 11] Hammon explains that simply limiting the oxygen is also unsatisfactory
because, for example, it limits yields and it reduces the availability of oxygen to
clean deposits on the catalyst. 19
[12] Hammon teaches using cut-out mechanisms to adjust both the reactant feed
and the oxygen feed to maintain the reactant and oxygen concentrations outside
the explosion limit20
[ 13] For example, by shutting off the air supply and then shutting off the
propylene supply.21
[ 14] Hammon teaches that even this approach may be further refined by having a
computer programmed with the explosion diagram control the process such that
if the operating point based on the gas concentrations comes within a
predetermined amount of the explosion limit, the gas feeds are automatically
stopped.22
16 Id. at iJiJ 0034-35.
17 Id. at iJ 0036.
18 Id. at iJiJ 0037-43.
19 Id. at iJiJ 0044-45.
20 Id. at iii! 0046-51. Air is an expedient oxygen-nitrogen gas source. iJ 0105.
21 Id. at iJ 0052 ("the air supply is shut off for safety reasons. As a rule, the
propylene supply, too, is stopped with a time lag.").
22 Id. at iJiJ 0058-62.
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Appeal2012-001756 Application 10/564,503
[ 15] Hammon teaches that it is expedient to continue circulating other gases to
facilitate restarting. 23
[ 1 6] Hammon teaches that the same process can be used for startup and
shutdown, but in practice adjustments must be made because measurements for
low concentrations of the reactant gases are less reliable. 24
[17] At startup, opening of the air and reactant feeds is enabled only after the
diluent gas, such as the steam or recycle gas, has reach a minimum value. 25
[ 18] Hammon defines "continuous operation" to mean that the "starting gas
mixture is fed continuously to the reactor over a relatively long period, as a rule
at least a few days, without interruption and product gas mixture is removed
continuously."
The examiner found that the organic reactant and the oxygen in Hammon's
reactor would continue to be "reactive" within the meaning of Mitsubishi's claims,
even after the feed supplies were stopped. 26
The reactants would necessarily continue to react until one or both were
essentially exhausted. Consequently, the concentrations of each would diminish
while the reactions continued and the gas feeds were not reopened.
Those skilled in the art would have appreciated from Hammon's discussion
of continuous operation, continued circulation of the diluent gases after shutdown
to facilitate startup and an adjusted version of the program for startup and
shutdown that Hammon contemplated a shutdown was only temporary with a
restart after reactant concentrations decreased to a safe level.
23 Id. at ,-i 0133.
24 Id. at ,-i,-i 0140-43.
25 Id. at ,-i 0143.
26 Final Rej. at 5.
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Appeal2012-001756 Application 10/564,503
Temporary cut off of gas feeds for a continuous reaction would have been an
effective way to control gas concentrations, at least to decrease the concentrations.
Once the feeds restart, concentrations would increase.
DISCUSSION
To anticipate, a single reference must disclose every element, explicitly or
inherently, in the same manner in which it is claimed. Mitsubishi contends that
"the present invention is characterized by increasing or decreasing a feed rate of a
gas, and then increasing or decreasing a feed rate of another gas without shutting
off a feed. "27 Claim 1, however, does not reflect the invention of Mitsubishi's
argument. For example, the argument implies that R(a) i- 0 and O(a) i- 0, but the
claim only says R( a) i- R(b) and 0( a) i- O(b ). As discussed above, the claims are
broad enough to be satisfied by feed rate decreases alone. While Hammon would
anticipate with just a tapering off of the reactants to a point greater than zero, it is
indicative of the breadth of claim 1 that it does not even exclude the zero points.
Mitsubishi also argues that Hammon does not teach a change in one feed
rate followed by a change in another feed rate. As discussed, supra at 6, Hammon
provides an example of decreasing the oxidant feed rate followed by decreasing the
reactant feed rate.
In sum, while the disclosures of Hammon and Mitsubishi differ, claim 1
does not expressly reflect the difference, but rather claims a scope broad enough to
include Hammon's invention.
27 Br. 5 (original emphasis).
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Appeal2012-001756 Application 10/564,503
HOLDING
Mitsubishi has not demonstrated prejudicial error in the final rejection of
claims 1, 3, 4 and 6-10 so the rejection is-
AFFIRMED
For the appellant: Oblon, Spivak, McClellan, Maier & Neustadt, L.L.P., of
Alexandria, Virginia.
cam
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