Ex Parte Butler

Board of Patent Appeals and Interferences

Sep 28, 2010

11092491 (B.P.A.I. Sep. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JIM BUTLER
______________

Appeal 2009-014978
Application 11/092,491
Technology Center 1700
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Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1-9 in the Office Action mailed September
23, 2008. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2008).
We affirm the decision of the Primary Examiner.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/092,491
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Claim 1 illustrates Appellant’s invention of a method of forming a
vinyl aromatic hydrocarbon, and is representative of the claims on appeal:
1. A method of forming a vinyl aromatic hydrocarbon comprising:
providing a catalytic dehydrogenation system, wherein the catalytic
dehydrogenation system comprises at least one reaction vessel, the at least
one reaction vessel loaded with a dehydrogenation catalyst comprising an
alkali metal enhanced iron oxide;
contacting the dehydrogenation catalyst with a feedstream comprising
an alkyl aromatic hydrocarbon to form a vinyl aromatic hydrocarbon; and
contacting the feedstream with a catalyst life extender, wherein the
catalyst life extender comprises cesium.
Appellant requests review of the grounds of rejection advanced on
appeal by the Examiner: claims 1-3 and 5-8 under 35 U.S.C. § 102(b) over
Chen (US 5,739,071); claim 4 under 35 U.S.C. § 103(a) over Chen; and
claim 9 under 35 U.S.C. § 103(a) over Chen in view of view Cocco (US
2002/0183573 A1). App. Br. 3;2 Ans. 2-4.
Appellant argues the claims in the ground of rejection as a group.
App. Br. 3-4. Thus, we decide this appeal based on claims 1, 4, and 9. 37
C.F.R. § 41.37(c)(1)(vii) (2008).
Opinion
I. § 102(b)
Appellant submits that the Examiner erred in finding that Chen
anticipates claim 1. Br. 3-4. According to Appellant, Chen does not clearly
and unequivocally direct one of ordinary skill in the art to the claimed
method of forming a vinyl aromatic hydrocarbon which comprises at least,

2 We considered the Appeal Brief filed December 20, 2008, as
supplemented by the Communication filed February 12, 2009.
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Application 11/092,491
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among other steps, contacting the alkyl aromatic hydrocarbon feedstream
with a catalyst life extender which comprises at least cesium as specified in
claim 1. Appellant contends that “the mere inclusion of several compounds
in a list of compounds does not, in itself, establish that of each of the
compounds is equivalent to the others for all purposes,” arguing “that
cesium and potassium are not interchangeable for the purpose of catalyst life
extension, as taught by the instant specification.” Br. 3, citing Spec. ¶ 0035.
Appellant further contends that Chen does not sufficiently describe the
claimed method encompassed by claim 1 to have placed the public in
possession thereof, arguing that “Chen teaches potassium compounds for
catalyst life extension, while stating that cesium is a less common alkali
metal.” Br. 3-4 (original emphasis deleted).
We agree with the Examiner’s finding of fact with respect to Chen.
Ans. 2 and 4-5. The Examiner finds that Chen would have described to one
of ordinary skill in the art a method which “comprises the steps of
continuously or intermittently adding to a reactant feedstream of an
alkylaromatic hydrocarbon an effective amount of an alkyl metal or alkali
metal compound sufficient to regenerate, stabilize, or enhance the activity of
the dehydrogenation catalyst and thereby to restore and to maintain high
levels of conversion and selectivity.” Ans. 2. Chen col. 6, ll. 7-14. The
Examiner further finds that Chen would have described to one of ordinary
skill in the art that
[t]he alkali metals and alkali metal compounds that are useful in
carrying out the method of this invention include all non-
halogen sources of alkali metal ions. As used in connection
with this invention, the term “alkali metal” is meant to include,
but without limitation thereto, potassium, sodium, lithium and
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Application 11/092,491
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other less-common members of the group IA metals of the
periodic table, such as rubidium and cesium. Cost
considerations will ordinarily dictate the choice of potassium or
sodium or their compounds, however.
Chen col. 11, ll. 15-23. Ans. 4.
On this record, we cannot agree with Appellant that the Examiner
erred in finding that as a matter of fact, Chen would have described the
claimed method encompassed by claim 1. A reference that does not disclose
a specific embodiment which satisfies all of the claim limitations will
nonetheless describe the claimed invention within the meaning of § 102 if it
“clearly and unequivocally . . . [directs] those skilled in the art to [the
claimed invention] without any need for picking, choosing, and combining
various disclosures not directly related to each other by the teachings of the
cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Such
direction is provided to one skilled in the art where the totality of the
reference provides a “pattern of preferences” which describes the claimed
invention without the necessity for judicious selection from various
disclosures thereof, even if the reference disparages the invention so
described. See, e.g., In re Sivaramakrishnan, 673 F.2d 1383, 1385 (CCPA
1982) (“[T]he fact remains that one of ordinary skill informed by the
teachings of [the reference] would not have had to choose judiciously from a
genus of possible combinations of resin and salt to obtain the very subject
matter to which appellant’s composition per se claims are directed.”); In re
Schaumann, 572 F.2d 312, 316-17 (CCPA 1978); In re Petering, 301 F.2d
676, 682 (CCPA 1962).
We, like the Examiner, find that Chen describes a clear direction to a
method that includes a catalyst life extender comprising cesium as claimed
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Application 11/092,491
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in claim 1. Indeed, the alkali metals identified by Chen as useful in the
described method are not a large genus and indeed, cesium is specifically
identified. See, e.g., Sivaramakrishnan, 673 F.2d at 1385. The fact that
Chen may not prefer cesium and Appellant contends that cesium is not as
useful as potassium in the claimed method, does not establish that the
claimed method encompassed by claim 1 is not anticipated by Chen. See,
e.g., Celeritas Technologies, Ltd. v. Rockwell International Corp., 150 F.3d
1354, 1361 (Fed. Cir. 1998) (“A reference is no less anticipatory if, after
disclosing the invention, the reference then disparages it. Thus, the question
whether a reference ‘teaches away’ from the invention is inapplicable to an
anticipation analysis.”).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of anticipation found in Chen with
Appellant’s countervailing evidence of and argument for non-anticipation
and conclude, by a preponderance of the evidence and weight of argument,
that the claimed invention encompassed by appealed claims 1-3 and 5-8
would have been anticipated as a matter of fact under 35 U.S.C. § 102(b).
II. § 103(a)
With respect to claim 4, Appellant submits that the Examiner erred in
finding that Chen renders obvious the claimed method encompassed by
claim 4. Br. 4. Appellant contends that Chen does not teach or suggest a
method wherein the catalyst life extender comprises cesium. Br. 4. In this
respect, Appellant relies on the same arguments advanced with respect to the
ground of rejection under § 102(b). Br. 4. In similar manner, Appellant
further points out that Chen discloses that potassium chloride should not be
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Application 11/092,491
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used in the method, and “as demonstrated by the present specification, not
all of the alkali metal compounds exhibit the benefit of reduction of reactor
fouling.” Br. 4, citing “specification, at least the Example.” “In fact, the
specific alkali metals taught by Chen can actually cause reactor fouling
when utilized as disclosed in the present specification.” Br. 4 (original
emphasis deleted).
We cannot agree with Appellant’s position. We find that none of
Appellant’s contentions are specifically directed to the use of cesium
compounds as taught by Chen. Indeed, the thrust of the Examiner’s ground
of rejection of claim 4 is that one of ordinary skill in the art would have used
carbonate or hydroxide forms of cesium in view of Chen’s teaching that the
“alkali compounds include all non-halogen sources of alkali metal ions.”
Ans. 3.
With respect to claim 9, Appellant submits that the Examiner erred in
finding that the combined teachings of Chen and Cocco render obvious the
claimed method encompassed by claim 9. Br. 5. With respect to the
teachings of Cocco, Appellant contends “that cesium is not equivalent to
potassium neither for the purpose of catalyst life extension nor for the
purpose of catalyst activity, as argued previously and demonstrated by the
specification.” Br. 5.
We cannot agree with Appellant’s position. As before, and on the
same authority, we accord Appellant’s nonspecific contentions little weight.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in Chen,
with respect to claim 4, and in the combined teachings of Chen and Cocco,
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with respect to claim 9, with Appellant’s countervailing evidence of and
argument for nonobviousness and conclude, by a preponderance of the
evidence and weight of argument, that the claimed invention encompassed
by appealed claims 4 and 9 would have been obvious as a matter of law
under 35 U.S.C. § 103(a).
The Primary 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)(1)(v).

AFFIRMED

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