Ex Parte Brophy et al

Board of Patent Appeals and Interferences

May 17, 2012

10642439 (B.P.A.I. May. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/642,439 08/14/2003 John H. Brophy 02-024 2458
34833 7590 05/17/2012
FRANK ROSENBERG
P.O. BOX 29230
SAN FRANCISCO, CA 94129-0230
EXAMINER
MCDONOUGH, JAMES E
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
05/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN H. BROPHY
and KAI JAROSCH
____________

Appeal 2010-004239
Application 10/642,439
Technology Center 1700
____________

Before CHARLES F. WARREN, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3, 5, 7-9, 11, 24, 28, 32, 34-43, and
45-53. We have jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2010-004239
Application 10/642,439

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Appellants’ claimed invention is directed to a catalytic system
including a tethered catalyst composition in a microchannel wherein the
microchannel includes a bulk flow path. Appellants furnish a glossary
providing definitions for some of the claim terms, including “tethered
catalyst composition” (Spec. 6).
Claim 1 is illustrative and reproduced below:
1. A catalytic system comprising a tethered catalyst composition
disposed in a microchannel, wherein the microchannel comprises a bulk
flow path, wherein the tethered catalyst composition comprises a solid
support onto which has been immobilized an otherwise ordinarily molecular
catalyst or procatalyst moiety; and
wherein the microchannel comprises at least one wall and wherein at
least one heat transfer microchannel is adjacent to the at least one wall of the
microchannel.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Kang US 3,993,855 Nov. 23, 1976
Tonyovich US 6,488,838 B1 Dec. 3, 2002
Chapman US 2002/0182603 A1 Dec. 5, 2002
Ostoja-Starzeswki US 2003/0036474 A1 Feb. 20, 2003
Hoveyda US 2004/0019212 A1 Jan. 29, 2004

Haswell et al., “Kumada-Corriu Reactions in a Pressure-Driven Microflow
Reactor” Lab on a Chip, pp. 64-166 (2001).

The Examiner maintains the following grounds of rejection.
Claims 1, 3, 5, 7-9, 11, 24, 28, 34-39, 41, 42, 47, and 49-53 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Haswell in
view of Tonkovich. Claims 28, 32, and 41stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Haswell in view of Tonkovich, and
Hoveyda. Claim 40stands rejected under 35 U.S.C. § 103(a) as being
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Application 10/642,439

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unpatentable over Haswell in view of Tonkovich and Kang. Claims 43, 45,
and 48 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Haswell in view of Tonkovich and Chapman. Claim 46 stands rejected
under 35 U.S.C. § 103(a) as being unpatentable over Haswell in view of
Tonkovich, and Ostoja-Starzewski.
We reverse the stated rejections. Our reasoning follows.
All of the appealed claims require a catalyst system that includes a
microchannel having a bulk flow path with a tethered catalyst disposed in
the microchannel.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984). Here, the Examiner’s reliance on a
combination of Haswell and Tonkovich to undergird all of the stated
obviousness rejections is not well-founded.1
As set forth in the first stated rejection, the Examiner maintains that
providing a bulk flow path arrangement for the catalyst system of Haswell
would have been prima facie obvious to one of ordinary skill in the art
“depending on the reaction to be carried out” (Ans. 4). The Examiner
further asserts that “the skilled artisan would be expected to be able to select
whether or not to use a bulk flow path to optimize the reactor conditions as
this would be routine optimization” (id.).
As explained by Appellants, however, Haswell is directed to
performing reactions in a pressure driven microflow reactor wherein a

1 The Examiner relies on additional references in the second, third, fourth
and fifth stated rejections for allegedly suggesting additional features
required by the affected separately rejected claims.
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Application 10/642,439

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tethered catalyst is arranged on polymer beads that form a fixed catalyst bed
located between two plugs of glass wool (App. Br. 4; Haswell, p. 165).
Haswell discloses that “the beads are packed in the capillary, the reaction
solution is driven through the pores under pressure and the number of
catalytic sites available for reaction is increased” (id.).
Contrarily, Tonkovich is directed to a microchannel reactor wherein a
porous catalyst and a bulk flow path are arranged. Hence, Appellants
reasonably urge that one of ordinary skill in the art would not look to
optimize/modify Haswell, wherein increased catalyst sites available for
reaction is desired and where a pressure driven reactive solution is employed
using a packed bed, by replacing Haswell’s packed bed with a catalyst
arrangement providing for a bulk flow path (App. Br. 4 and 5). In this
regard, the Examiner has not established that Tonkovich is directed to a
tethered catalyst, as Appellants’ catalyst system and Haswell are directed to,
and/or that the bulk flow path arrangement of Tonkovich would have
increased the catalyst sites available for reaction for a tethered catalyst, such
as that of Haswell.
Consequently, the Examiner has not established that the teachings of
Tonkovich would have instructed or suggested to one of ordinary skill in the
art the proposed modification of Haswell’s tethered catalyst arrangement to
provide for a bulk flow path.
Nor has the Examiner relied on for and/or convincingly explained
how any of the additional prior art references variously applied in each of
the second through fifth stated rejections make up for the deficiency in
supplying an adequate teaching and/or suggestion that would have led an
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ordinarily skilled artisan to modify the catalyst system of Haswell to provide
for a bulk flow path, as here-claimed.
In this regard, “rejections on obviousness grounds cannot be sustained
by conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness” being asserted. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007)). After all, rejections based on § 103(a) must rest on a factual
basis with these facts being interpreted without hindsight reconstruction of
the invention from the prior art. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967).
On this record, we reverse the Examiner’s obviousness rejections of
the appealed claims.

ORDER
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

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