Ex Parte 7057083 et al

Patent Trial and Appeal Board

Mar 11, 2014

95001285 (P.T.A.B. Mar. 11, 2014)

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.
95/001,285 12/18/2009 7057083 007408.00062 2089
23455 7590 03/11/2014
EXXONMOBIL CHEMICAL COMPANY
5200 BAYWAY DRIVE
P.O. BOX 2149
BAYTOWN, TX 77522-2149
EXAMINER
JONES, DWAYNE C
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
03/11/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

UOP LLC
Requester

v.

EXXONMOBIL CHEMICAL PATENTS INC.
Patent Owner and Appellant
____________

Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2
Technology Center 3900
____________

Before MARK NAGUMO, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal by the Patent Owner from the Patent
Examiner’s decision to reject pending claims in an inter partes
reexamination of U.S. Patent 7,057,083 B2. The Board’s jurisdiction for
this appeal is under 35 U.S.C. §§ 6(b), 134, and 315. We AFFIRM.
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

2

I. BACKGROUND
The patent in dispute in this appeal is U.S. Patent 7,057,083 B2
(hereinafter, “the ’083 Patent”), which issued on June 6, 2006, to Teng
Xu et al. The claims are drawn to a process for converting oxygenates (such
as methanol) to olefins (especially ethylene and propylene) using a
molecular sieve pretreated with a composition that includes C4-C7 olefins.
The ’083 Patent, col. 1, ll. 7-12; col. 3, ll. 4-15. The treatment with C4-C7
olefins is said to provide increased selectivity to ethylene and propylene
formation. Id. at col. 4, ll. 46-50.
A request for inter partes reexamination under 35 U.S.C.
§§ 311-318 and 37 C.F.R. §§ 1.902-1.997 for the ’083 Patent was filed
December 18, 2009, by UOP, LLC. (hereinafter “Requester”). See Request
for Inter Partes Reexamination 1 (hereinafter “Request”). The Patent
Owner is ExxonMobil Chemical Patents Inc. (hereinafter “Patent Owner”).
See Patent Owner Appeal Brief 3, dated September 13, 2012 (hereinafter
“App. Br.”). Claims 1-12, 16-29, 35-41, 45, 46, 49-61, and 63-74 are
rejected and are subject to the present Appeal. App. Br. 3.
1

Patent Owner appeals the following rejections maintained by the
Examiner. See App. Br. 5-6; Right of Appeal Notice, dated June 15, 2012
(hereinafter “RAN”).

1
On page 3 of the Appeal Brief, Patent Owner indicates that claims 31-34
are rejected and subject to appeal. See App. Br. 3. However, claims 30-34
have been cancelled. See App. Br. 25, Claims App’x; RAN 1.
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

3

1. Claims 1-12, 16-29, 35-41, 45, 46, 49-61, and 63-74
stand rejected under 35 U.S.C. §103(a) as unpatentable over Vaughn.
2

RAN 16 (Rejection 15).
2. Claims 1-12, 16-29, 35-41, 45, 46, 49-61, and 63-74
stand rejected under 35 U.S.C. §103(a) as unpatentable over Vaughn,
Vora,
3
and Plotkin.
4
RAN 42 (Rejection 18).
3. Claims 9, 38, and 61 stand rejected under 35 U.S.C.
§103(a) as unpatentable over Vaughn, Vora, Plotkin, and Stine.
5

RAN 63 (Rejection 20).
4. Claims 1-12, 16-29, 35-41, 45, 46, 49-61, and 63-74
stand rejected under 35 U.S.C. §S.C. §103(a) as unpatentable over
Fung,
6
Vaughn, Vora, and Plotkin. RAN 65 (Rejection 21).
5. Claim 56 unpatentable under 35 U.S.C. § 112, second
paragraph as being indefinite. RAN 89 (Rejection 25).

Claim 1 is representative and reads as follows (with underlining
showing additions from the original patented claim):

2
US 6,444,868 B1, issued Sep. 3, 2002, to Vaughn et al.
3
V. Vora et al., “UOP/HYDRO MTO Process for Ethylene and
Propylene Production,” Proceedings of the 8
th
Ethylene Producers’
Conference, Volume 5, p. 576 (Paper 76D), American Institute of Chemical
Engineers (1996).
4
Jeff Plotkin, “Methanol to Olefins-Opportunities and
Challenges,” Proceedings of the 13
th
Ethylene Producers’ Conference,
Volume 10, p. 5 (Paper 75B), American Institute of Chemical Engineers
(2001).
5
US 5,157,181, issued Oct. 20, 1992, to Stine et al.
6
US 2002/0013505 A1, published Jan. 31, 2002, naming Fung et al. as
inventors.
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

4

1. A process for making an olefin product from an oxygenate
feed, the process comprising the steps of:
a) contacting a metalloaluminophosphate molecular sieve
having a porous framework structure with a C4-C7 olefin
composition in a pretreatment zone at a WHSV from about 5
hr
-1
to about 100 hr
-1
to form an integrated hydrocarbon co-
catalyst within the porous framework; and
b) contacting the metalloaluminophosphate molecular
sieve containing the integrated hydrocarbon co-catalyst with an
oxygenate in an oxygenate conversion zone at a WHSV from
about 20 hr
-1
to about 300 hr
-1
to convert the oxygenate to olefin
product,
wherein the pretreatment zone is at a temperature the
same as or higher than that of the reaction zone; and
wherein the molecular sieve of step a) contacts the olefin
composition in the pretreatment zone at WHSV that is at least
10 hr
-1
lower than that at which the molecular sieve of step b)
contacts the oxygenate.

OBVIOUSNESS BASED ON VAUGHN
All of the claims on appeal stand rejected as unpatentable under
35 U.S.C. § 103(a) over Vaughn. Patent Owner initially argues all of its
claims as a group (see App Br. 7-11 and 12-15), and presents particular
arguments and with respect to claims 6-9, 35-39, and 58-61, as a group (see
App. Br. 11 and 17-18). While Patent Owner identifies certain other groups
of claims, namely claims 24, 49, and 72-74 (App. Br. 18), claims 51, 52, 69,
and 70 (App. Br. 18-19) and claims 16 and 45 (App. Br. 19), Patent Owner
either presents argument no different in substance to those made with respect
to all of the claims (App. Br. 18-19), or merely restates the claim language
as being not taught or suggested by Vaughn without substantive argument
(App. Br. 18 and 19). See 37 C.F.R. § 41.67(c)(1)(vii) (“A statement which
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

5

merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (interpreting identical language in 37 C.F.R.
§ 41.37(c)(1)(vii)). Accordingly, we decide the issues on Appeal with
respect to claim 1, representing all of the claims on appeal, and with respect
to claim 6, representing the group of claims 6-9, 35-39 and 58-61.

Claim 1
Claim 1 recites a process for making an olefin product from an
oxygenate feed that includes:
(1) contacting a molecular sieve with a C4-C7 olefin to form an
integrated hydrocarbon co-catalyst within the molecular sieve in a
pretreatment zone
(2) contacting the hydrocarbon co-catalyst molecular sieve with an
oxygenate to convert the oxygenate to an olefin product in a
oxygenate conversion zone.
In the pretreatment zone (1), the C4-C7 olefin contacts the molecular
sieve at a particular weight hourly space velocity (WHSV)
7
. In the
oxygenate conversion zone (2), the oxygenate contacts the molecular sieve
co-catalyst at a particular WHSV. Further, the claim recites a relationship
between the WHSVs at which the C4-C7 olefin contacts the molecular sieve
in the pretreatment zone (1) and at which the oxygenate contacts the
molecular sieve co-catalyst in the oxygenate conversion zone (2).

7
Weight hourly space velocity (WHSV) is defined in the ’083 Patent as
being “the total weight of feedstock excluding any diluents per hour weight
of molecular sieve in the catalyst composition.” Col. 15, ll. 6-9
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

6

Moreover, the claim recites that the temperature of the pretreatment zone (1)
is the same as or higher than in the oxygenate conversion zone (2).
The Examiner found that Vaughn describes a pretreatment zone (1)
(second reaction zone 16) and an oxygenate conversion zone (2) (first
reaction zone 14) because the catalyst in the second reaction zone is passed
to the first reaction zone to contact the oxygenate stream. RAN 17. The
Examiner finds that Vaughn describes a temperature differential between the
pretreatment zone (1) and oxygenate conversion zone (2) (Vaughn, col. 9,
ll. 44-47) and a WHSV in the oxygenate reaction zone (2) that meets the
limitations of the claims (Vaughn, col. 11, ll. 7-10). RAN 18. However, the
Examiner finds that Vaughn does not expressly teach a WHSV in the
pretreatment zone (1) or the differential of WHSVs between the
pretreatment zone (1) and the oxygenate conversion zone (2). Nonetheless,
the Examiner finds that the WHSV for the pretreatment zone (1) and the
claimed WHSV differential would have been obvious over the teachings of
Vaughn. RAN 18-20.
The Examiner explains that the WHSV in the second reaction zone
(pretreatment zone (1)) is “the product weight per hour entering the second
reaction zone divided by the weight of the catalyst in the second reaction
zone.” RAN 18 (citing Vaughn, col. 10, l. 66 to col. 11, l. 23). The
Examiner then finds that the WHSV for the pretreatment zone (1)
necessarily is less than the WHSV in the oxygenate reaction zone (2) based
on express teachings in Vaughn.
8
RAN 18-19.

8
The Examiner relies on the fact that Vaughn teaches that “more catalyst is
retained in the second reaction zone [pretreatment zone (1)]” and that “the
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

7

The Examiner finds that Vaughn further discloses that the WHSV in
the pretreatment zone (1) “can be adjusted according to process conditions,
catalyst activity, and desired reaction extent.” RAN 19 (citing Vaughn,
col. 11, ll. 14-23). Accordingly, the Examiner finds that the WHSV in the
pretreatment zone (1) is a result-effective variable and, in the absence of a
demonstrated criticality, the range of WHSV for the pretreatment zone (1)
and, thus, the WHSV differential between the zones recited in the claims
would have been no more than optimum values discovered by routine
experimentation by the skilled artisan. RAN 19-20.
The Patent Owner argues that Vaughn does not teach or suggest the
particular temperatures and WHSV conditions used in the process of the
present invention. App. Br. 9 and 12-13. As discussed above, the Examiner
has found express teachings in Vaughn for the temperature differential and
the WHSV for the oxygenate conversion zone (2) recited in the claims.
Patent Owner has not persuasively shown these findings to be in error.
Patent Owner contends that the Examiner erred in finding that Vaughn
teaches there is more catalyst in the second reaction zone 16 [pretreatment
zone (1)] than in the first reaction zone 14 [oxygenate conversion zone (2)].
App. Br. 10-11. Namely, Patent Owner argues that Vaughn describes an
increase in packing density of the catalyst in the second reaction zone 16
and, as such, “there is more catalyst in the same reactor height compared to

weight of products entering the second reaction zone per hour will
necessarily equal the weight of the feed entering the first reaction zone per
hour” or, alternatively, the light olefin will be separated from the product
stream further reducing the weight of the products entering the second
reaction zone. RAN 18-19 (citing Vaughn, col. 9, ll. 50-56 and col. 6, ll. 59-
62).
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

8

section 14.” Id. (citing Vaughn, col. 9, ll. 53-60). Since Figure 1 “shows
section 16 to be much shorter in length than section 14,” according to Patent
Owner, it cannot be concluded that “there is more total catalyst in section 16
than section 14.” Id.
Patent Owner’s arguments are not persuasive. First, we find Patent
Owner’s arguments unpersuasive as to the teachings of Vaughn.
9

Second, and more importantly, the finding challenged by Patent
Owner is supportive of, but not critical to, the Examiner’s conclusion of
obviousness. The Examiner’s finding does not address the particular WHSV
range for the pretreatment zone and particular WHSV differential recited in
the claims. Accordingly, the Examiner also finds that Vaughn discloses that
the WHSV for the pretreatment zone (1) is a result effective variable which
can be optimized by routine experimentation by the skilled artisan.
RAN 19-20.

9
Even if Vaughn does not clearly teach that there is more catalyst in the
second reaction zone, as found by the Examiner (RAN 18-19) and argued by
Requester (see Respondent Brief 3-4, dated October 15, 2012 (hereinafter
“Res. Br.”), the skilled artisan would have understood that the feed rate is
higher in the oxygenate conversion zone than in the pretreatment zone,
particularly in the situation, as taught by Vaughn, where the light olefins are
removed. Patent Owner (being the assignee of Vaughn) has not explained
why a person of ordinary skill in the art would not have understood the
disclosure to mean that the WHSV for the pretreatment zone is necessarily
less than in the oxygenate conversion zone. For example, drawings in
patents are not described as being drawn to scale and may not be relied on to
show particular sizes when the specification is completely silent on the
issue. Hockerson-Halberstadt Inc. v. Avia Group Int’l Inc., 222 F.3d 951,
956 (Fed. Cir. 2000); see also In re Wright, 569 F.2d 1124, 1127 (CCPA
1977)(“Absent any written description in the specification of quantitative
values, arguments based on measurement of a drawing are of little value.”).
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

9

“[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 (CCPA 1980); see also In re Aller, 220 F.2d 454, 456
(CCPA 1955) (“where the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation.”).
The Examiner’s findings are supported by the teachings of Vaughn,
which states that “[t]he values of useful WHSVs used in the second reaction
zone will be dependent upon the process conditions present, the activity of
the catalyst present and the extend of [sic] extent of second reaction
desired.” Vaughn, col. 11, ll. 19-23. Patent Owner does not persuasively
challenge the Examiner’s finding that the WHSV is a result effective
variable.
Rather, Patent Owner argues that this statement does not “indicate[]
that the selectivity of the oxygenate-to-olefins reaction for ethylene and/or
propylene can be improved.” App. Br. 14. Patent Owner further argues that
the data in Table 1 of the ’083 patent demonstrates “that the selectivity for
ethylene goes up as the WHSV in the pretreatment zone goes down.” Id.
We note that ethylene selectivity over propylene is not a limitation of claim
1. Hence, Patent Owner is relying on this particular result as being unique to
the particular WHSV ranges claimed.
We do not find Patent Owner’s argument persuasive of
nonobviousness. It is true that a routine variable change sometimes causes
an unexpected effect. In such a situation, the claimed subject matter will be
unobvious under the law if Appellant presents a showing of criticality of the
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

10

range for unexpected beneficial results. See Boesch, 617 F.2d at 276 (CCPA
1980); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
However, we agree with the Examiner that the data merely shows the
optimization of the WHSV for the pretreatment zone (1) consistent with the
teachings and direction provided by Vaughn for improved light olefin
production (the extent of second reaction desired). RAN 38 and 40-41. The
data in Table 1 shows the results of adjusting the WHSV in the pretreatment
zone (1) while holding the WHSV in the oxygenate conversion zone (2)
constant. ’083 Patent, col. 20, l. 58 to col. 21, l. 30. The data merely
suggests that lowering the WHSV in the pretreatment zone (1) for a
particular WHSV in the oxygenate conversion zone (2) results in a gradual
improvement in ethylene production.
We further agree with the Examiner that the data does not suggest that
such selectivity is critical to the particular WHSV range in the pretreatment
zone or the WHSV differential recited in the claims because the data is not
commensurate in scope with the claims. The data in Table 1 demonstrates
ethylene over propylene favorability for a single oxygenate conversion zone
WHSV value of 100 hr
-1
and for pretreatment zone WHSV values of 56 hr
-1
,
28 hr
-1
, 14 hr
-1
, and 7 hr
-1
, respectively. Meanwhile, claim 1 recites a range
of oxygenate conversion zone WHSV of 20 to 300 hr
-1
, a range of
pretreatment zone of from 5 to 100 hr
-1
, and a differential of at least 10 hr
-1
.
The data is not sufficient to show that there is an unexpected
selectivity in olefin production obtained by utilizing WHSV values within
the claimed ranges, which is not present outside of the claimed ranges for
the zones. The data provides no evidence that such selectivity is not also
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

11

present for pretreatment zone WHSV conditions outside of the 5 to 100 hr
-1

range. Likewise, Table 1 provides insufficient evidence to show that the
ethylene selectivity occurs for more than one oxygenate conversion zone
WHSV value over the 20 to 300 hr
-1
range claimed or that such selectivity
does not occur for WHSV values outside of this range.
Additionally, the data starts with a WHSV differential of 44 hr
-1

(100 hr
-1
for the oxygenate conversion zone and 56 hr
-1
for the
pretreatment zone) and the WHSV differential increases to 93 hr
-1
(100 hr
-1

for the oxygenate conversion zone and 7 hr
-1
for the pretreatment zone).
Noting only minor ethylene selectivity at a differential of 44 hr
-1
and
increases in ethylene selectivity with an increase in the differential above 44
hr
-1
, the trend suggests very little if any ethylene selectivity for a differential
as low as the 10 hr
-1
recited in claim 1. Thus, the data is insufficient to show
any ethylene selectivity for a differential as low as 10 hr
-1
, as recited in
claim 1.
Only claim 57 recites a WHSV differential of at least 44 hr
-1
, but
Patent Owner does not separately argue the patentability of claim 57
apart from the patentability of claims 1 and 27. See 37 C.F.R.
§ 41.67(c)(1)(vii)(“When multiple claims subject to the same ground of
rejection are argued as a group by appellant, the Board may select a single
claim from the group of claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of rejection on the basis
of the selected claim alone.”); See In re Suitco Surface, Inc., 603 F.3d 1255,
1261 (Fed. Cir. 2010) (holding that it is appropriate for the Board to consider
the appealed dependent claims to stand or fall with the independent claim
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

12

where Appellants fail to argue separately the patentability of dependent
claims). Further, for the reasons discussed above, the data is still insufficient
to show any criticality to ethylene selectivity for the WHSV range of claim
57.
Patent Owner also argue that the data in Table 2 shows reduced
selectivity when the oxygenate conversion zone (2) has a higher temperature
than the pretreatment zone (1). App. Br. 14. However, Vaughn describes a
preference for the second reaction zone 16 to have a higher temperature than
the first reaction zone 14. Vaughn, col. 11, ll. 44-49. The resulting ethylene
selectivity according to the data of Table 2 would thus be the natural result
of that preference. Accordingly, such selectivity falls well within the
teachings of the prior art.
Patent Owner further contends that “[i]n the claims of the ’083 patent
process, a C4-C7 olefin composition stream is separated from the product
stream exiting the oxygenate reaction zone” and that Vaughn “states that the
product stream does not need to be separated” and includes no such
separation between section 14 and section 16 of the reactor in Figure 1.
App. Br. 8-10.
Initially, we find no such requirement in most of the claims of the
’083 patent. Claim 1 does not recite any separation of its olefin product into
light olefins and C4-C7 olefins. The only requirement in claim 1 is that a
molecular sieve is contacted with a C4-C7 olefin composition. The
Specification of the ’083 patent describes such a composition as merely
“contain[ing] one or more C4-C7 olefins.” Col. 1, ll. 10-12. Accordingly,
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

13

the composition is not excluded from containing light olefins in addition to
C4-C7 olefins.
We find language reciting a step of separating the light olefins from
the C4-C7 olefins only in independent claim 27 and dependent claims 72
and 74. As pointed out by Requester (Res. Br. 3), Vaughn clearly teaches an
non-preferred embodiment, in addition to that illustrated in Figure 1, in
which the light ethylene and propylene products are separated between the
first reaction zone 14 and the second reaction zone 16. See Vaughn, col. 6,
ll. 47-58. We agree with the Requester that a reference may be relied upon
for all that it would have reasonably suggested to one having ordinary skill
in the art, including non-preferred embodiments. 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). Accordingly, the evidence is persuasive that
separation of the light olefins would have been obvious to one of ordinary
skill in the art.
Claim 6
Claim 6 depends from claim 1 and recites that “the molecular sieve
contacting the olefin composition in a pretreatment zone has a carbon
content of not greater than 2 wt %, based on total weight of the molecular
sieve, prior to contact with the olefin.” Patent Owner contends that the
pretreatment zone of Vaughn will have “partially deactivated and fully
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

14

deactivated catalyst” in addition to “regenerated catalyst,” and, thus, the
carbon levels in the pretreatment zone will have carbon levels greater than
what is reported in Vaughn for just regenerated catalyst. App. Br. 11.
Patent Owner also argues that Vaughn states that the “fresh catalyst, catalyst
from the regenerator, and catalyst from the first reaction zone” will have an
“average coke content” of “between about 2 and 30 wt. %.” Id. (citing
Vaughn, col. 7, ll. 5-7).
The claim only considers the carbon content of the molecular sieve
“prior to contact with the olefin.” See claim 6. The Specification of the
’083 Patent indicates that pretreatment of the molecular sieve occurs on
“fresh, activated catalyst, or regenerated catalyst,” which is substantially low
in carbon content. ’083 Patent, col. 12, ll. 36-52. Accordingly, the “carbon
content” in the claim excludes carbon in hydrocarbons derived from
oxygenates.
In Vaughn, the addition of the partially deactivated and fully
deactivated catalyst included by Patent Owner is “transferred from the
second reaction zone along with the product [including the C4-C7 olefins]
from the first reaction zone.” Vaughn, col. 6, l. 66 to col. 7, l. 1.
Accordingly, including the partially or fully deactivated catalyst transferred
along with the olefin product does not take into consideration the carbon
content of the molecular sieve “prior to contact with the olefin.” See Claim
6. Instead, the catalyst “prior to contact with the olefin” in the teachings of
Vaughn would include only the regenerated catalyst or optional fresh
catalyst. Vaughn discloses that the “coke content” for regenerated catalyst
falls within the claimed range and that “the use of a fresh, fully regenerated,
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

15

or partially regenerated catalyst in selectively converting C4
+
hydrocarbons
provides better overall light olefin selectivity with reasonable catalyst
activity, and provides better control of the reaction temperature inside of the
reactor than prior art processes.” Vaughn, col. 5, ll. 38-41 and 50-55.
Accordingly, the skilled artisan would have the carbon content of the
molecular sieve “prior to contact with the olefin” within the claimed range.
Moreover, we agree with the Requester that dependent claims 10-12
of Vaughn can be reasonably interpreted to suggest the claimed carbon
content for the “catalyst directed to the second reaction zone [pretreatment
zone].” Res. Br. 4-5.

OBVIOUSNESS BASED ON VAUGHN, VORA, AND PLOTKIN
All of the claims on appeal stand rejected as unpatentable under
35 U.S.C. § 103(a) over Vaughn in view of Vora and Plotkin.
10
Patent
Owner’s arguments with respect to specific claims are identical to those
discussed above with respect to obviousness over the Vaughn reference
alone.
The Examiner’s rejection relies on the material balance data of Vora
and Plotkin, which are processes using “the same feed and the same or very
similar conversion in a process of making an olefin product from an
oxygenate feed,” to calculate WHSV in the pretreatment zone (1) for various

10
With respect to claims 9, 38, and 61 the Examiner provides an alternative
rejection further based on the teachings of Stine. Patent Owner does not
substantively argue claims 9, 38, and 61 apart from the other claims on
appeal, except as discussed above. Accordingly, we consider the alternative
rejection incorporated in Patent Owner’s arguments addressed infra.
Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

16

WHSV values in the described range for the oxygenate conversion zone (2)
of Vaughn where substantially all of the light olefin compounds are
separated from the product stream of the first reaction zone as taught by
Vaughn. RAN 44-46. The Examiner concludes that
One having ordinary skill implementing the specific teachings
of Vaughn in view of Vora would predictably and reasonably
expect with success to have a WHSV that is lower in the second
reaction (pretreatment) zone than the first reaction (oxygenate
conversion) zone . . . in order to improve the selectivity of the
lighter olefins over the heavier olefins, thereby meeting and
rendering the newly added WHSV limitations in the
pretreatment and oxygenate conversion reaction zones obvious.
RAN 46.
As discussed above, Patent Owner contends that the calculations
presume separation of the light olefins from the product stream and that
Vaughn includes no such separation between section 14 and section 16 of
the reactor in Figure 1. App. Br. 12.
We discuss in detail above why Patent Owner’s argument is not
persuasive, namely that Vaughn clearly teaches an non-preferred
embodiment in addition to that illustrated in Figure 1 in which the light
ethylene and propylene products are separated between the first reaction
zone 14 and the second reaction zone 16. See Vaughn, col. 6, ll. 47-58.
Patent Owner presents no further persuasive argument that the Examiner’s
findings are in error. Accordingly, we affirm the Examiner’s rejections
based on Vaughn in view of Vora and Plotkin.

Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

17

OBVIOUSNESS BASED ON FUNG, VAUGHN, VORA, AND
PLOTKIN
All of the claims on appeal stand rejected as unpatentable under
35 U.S.C. § 103(a) over Fung in view of Vaughn, Vora, and Plotkin. The
Examiner makes similar findings and substantially identical reasoning with
respect to the teachings of Fung and Vaughn as made with respect to
Vaughn alone, as discussed above. With respect to Fung, Patent Owner
merely contends that “Fung is much like Vaughn in that, as admitted by the
Examiner, Fung does not disclose the WHSV differential nor the
temperature differentials between a pre-treatment zone and reaction zone.”
App. Br. 16.
For the reason discussed above, Patent Owner’s arguments are not
persuasive, and we affirm the Examiner’s findings and reasoning with
respect to the teachings of the prior art.

INDEFINITENESS
With respect to the rejection of claim 56 as being indefinite under
35 U.S.C. § 112, second paragraph, Patent Owner presents no persuasive
evidence of error by the Examiner. See App. Br. 17. Accordingly, we
summarily affirm the Examiner’s rejection.

SUMMARY
All of the rejections maintained by the Examiner are affirmed.

Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

18

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 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).

AFFIRMED

ak

Appeal 2013-008723
Reexamination Control 95/001,285
Patent 7,057,083 B2

19

PATENT OWNER:

ExxonMobile Chemical Company
5200 Bayway Drive
P.O. Box 2149
Baytown, TX 77522-2149

THIRD-PARTY REQUESTER:

Joseph M. Skerpon
Banner & Witcoff, Ltd.
1100 13
th
Street, NW
Suite 1200
Washington, DC 20005-4051