Ex Parte Cheng et al

Patent Trial and Appeal Board

Jul 27, 2016

11922438 (P.T.A.B. Jul. 27, 2016)

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.
11/922,438 12/18/2007 Wu-Cheng Cheng W9694-01 6548
30633 7590 07/28/2016
W.R. GRACE & CO.-CONN.
7500 GRACE DRIVE
COLUMBIA, MD 21044
EXAMINER
STEIN, MICHELLE
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
07/28/2016 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WU-CHENG CHENG, RANJIT KUMAR,
MEENAKSHI SUNDARAM KRISHNAMOORTHY,
MICHAEL SCOTT ZIEBARTH, and PHILIP S. DIETZ
____________

Appeal 2015-000887
Application 11/922,438
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, JULIA HEANEY, and
MONTÉ T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal the Examiner’s final rejection of claims 1, 3, 5–14,
17, 18, 22, 24, and 26–39. 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify W.R. Grace & Co.-Conn. as the Real Party in Interest.
App. Br. 3.
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The Claimed Invention
Appellants’ disclosure relates to the use of catalysts to enhance yields
of light olefins, e.g., propylene, in fluidized catalytic cracking (FCC)
processes. Spec. ¶ 1; Abstract. Claims 1 and 22 are representative of the
claims on appeal and are reproduced below from the Claims Appendix to the
Appeal Brief (App. Br. 24, 27, 28):
1. A fluidizable catalyst composition comprising:
(a) pentasil zeolite having a silica/alumina framework,
(b) about 8 to 24 percent by weight phosphorus (as P2O5),
(c) about 1 to 10 % by weight iron oxide (as Fe2O3) present
outside the pentasil framework, and
(d) matrix
wherein the amounts of phosphorus and iron oxide above
are based on the total amount of particles comprising the pentasil
zeolite, phosphorus, iron oxide, and matrix, and the composition
has an average particle size in the range of about 20 to about 200
microns.

22. A catalytic cracking process comprising:
(a) introducing a hydrocarbon feedstock into a reaction zone
of a catalytic cracking unit comprised of a reaction zone,
stripping zone, and a regeneration zone, which feedstock is
characterized as having an initial boiling point from about 120°C
with end points up to about 850°C;
(b) catalytically cracking said feedstock in said reaction
zone at a temperature from about 400°C to about 700°C, by
causing the feedstock to be in contact with a fluidizable cracking
catalyst having an average particle size in the range of about 20
to about 200 microns, and the catalyst comprising:
(i) pentasil zeolite having a silica/alumina framework,
(ii) about 8 to 24 percent by weight phosphorus (as
P20s), and
(ii) about 1 to 10 % by weight iron oxide present outside
the pentasil framework, and
(iv) matrix
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wherein the amounts of phosphorus and iron oxide are based
on the total amount of particles comprising the pentasil zeolite,
phosphorus, iron oxide, and matrix;
(c) stripping recovered used catalyst particles with a
stripping fluid in a stripping zone to remove therefrom some
hydrocarbonaceous material; and
(d) recovering stripped hydrocarbonaceous material from
the stripping zone and circulating stripped used catalyst particles
to the regenerator or regeneration zone; and regenerating said
cracking catalyst in a regeneration zone by burning-off a
substantial amount of coke on said catalyst, and with any added
fuel component to maintain the regenerated catalyst at a
temperature which will maintain the catalytic cracking reactor at
a temperature from about 400°C to about 700°C; and
(e) recycling said regenerated hot catalyst to the reaction
zone.
The References
The Examiner relies on the following references in rejecting the
claims on appeal:
Ao US 3,709,832 Jan. 9, 1973
Zhang et al., US 6,080,698 June 27, 2000
(hereinafter “Zhang”)
Stuntz et al., US 2001/0042701 A1 Nov. 22, 2001
(hereinafter “Stuntz”)
Ziebarth et al., US 2002/0049133 A1 Apr. 25, 2002
(hereinafter “Ziebarth”)
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 3, 6–14, and 17 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Ziebarth in view of Zhang.
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2. Claims 22, 24, and 26–35 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ziebarth in view of Zhang, as applied to
claim 1, and further in view of Stuntz.
3. Claims 5 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ziebarth in view of Zhang, as applied to claim 1,
and further in view of Stuntz and Ao.
4. Claims 36–39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zhang in view of Stuntz.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejections 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.
Rejection 1
Initially, we note that Appellants argue claims 1, 3, 6–14, and 17 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)(1)(iv).
The Examiner finds that the combination of Ziebarth and Zhang
suggests all of the limitations of claim 1 and would have rendered claim 1
obvious. Ans. 3, 4 (citing Ziebarth ¶¶ 38, 41, 58; Zhang, col. 3, ll. 32–34,
42–50, col. 5, ll. 5–9). The Examiner finds that Ziebarth discloses nearly all
of claim 1’s limitations, but that it “does not explicitly disclose [that] the
catalyst comprises 1–10% by weight iron oxide outside the pentasil
framework,” as required by the claim. Id. at 3. The Examiner, however,
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relies on Zhang for teaching this missing limitation. Id. at 4. In particular,
the Examiner finds that Zhang teaches “a similar cracking catalyst which
contains 0.5–3 wt% iron oxide transition metal in combination with ZSM-5
or ZSM-11” and that “the transition metal increases the selectivity to
olefin[s], especially ethylene and propylene.” Id. (citing Zhang, col. 3, ll.
32–34, 42–50, col. 5, ll. 5–9).
The Examiner concludes that it would have been obvious to a person
having ordinary skill in the art at the time of the invention “to have
incorporated the Zhang iron oxide transition metal into the [Ziebarth]
catalyst composition, for the benefit of obtaining increased selectivity to
ethylene and propylene.” Ans. 4.
At pages 14 through 17 of the Appeal Brief, Appellants argue
essentially that the Examiner’s rejection should be reversed because one of
ordinary skill in the art would not have been motivated to combine the
teachings of Ziebarth and Zhang to arrive at the claimed invention. App. Br.
14–17. In particular, Appellants argue that: (1) “Ziebarth does not disclose
utilizing iron or other similar metals for the purpose of enhancing olefins”;
(2) “Zhang prefers other metals and teaches their use for improving ethylene
yields from pyrolysis processes”; (3) “Ziebarth . . . would not motivate one
of ordinary skill to combine the amount of iron in Appellants’ invention . . .
with a metal that is not preferred by Zhang”; (4) “one of ordinary skill would
not be motivated to add other materials such as alkaline earth and [the]
transition metal” as taught by Zhang; (5) “neither reference suggests that
Zhang’s treatment of pentasil can be with transition metal alone”; (6) “one
of ordinary skill would not be motivated by either reference to add iron
oxide to Ziebarth’s materials, which are designed for FCC processes”;
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(7) “one of ordinary skill would not necessarily find Zhang’s teachings
probative with respect to FCC processes and Ziebarth’s attrition resistant
catalyst for use in such processes”; and that (8) “the common features of
pentasil and ethylene/propoylene [sic] recovery does not rise to the level of
suggesting Appellants’ invention.” Id. at 14–17.
We are not persuaded by these arguments because Appellants attack
the references individually rather than the collective teachings of the prior
art as a whole. One cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d 413, 425 (CCPA 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.”). Appellants’ arguments are
unpersuasive because they are based on what Appellants contend Ziebarth
and Zhang teach individually, and not the teachings of the prior art
combination as a whole and what the combined teachings of the references
would have suggested to one of ordinary skill in the art.
Moreover, based on the record before us and contrary to Appellants’
arguments, the Examiner’s findings regarding Ziebarth’s and Zhang’s
combined teachings and rationale for why one of ordinary skill would have
combined these teachings to arrive at Appellants’ claimed invention are
supported by a preponderance of evidence and based on sound technical
reasoning. Ziebarth, Abstract, ¶¶ 38, 41, 58; Zhang, Abstract, col. 3, ll. 32–
34, 42–50, col. 5, ll. 5–9. As the Examiner concluded (Ans. 3, 4, 11),
because Zhang and Ziebarth are both drawn to catalytic cracking processes
to produce ethylene and propylene using zeolite and phosphorous catalyst
components, it would have been obvious to a person having ordinary skill in
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the art at the time of the invention to have incorporated Zhang’s iron oxide
transition metal into Ziebarth’s catalyst composition for the benefit of
obtaining increased selectivity to ethylene and propylene. Ziebarth ¶¶ 41,
58; Zhang, col. 3, ll. 27–50, col. 5, ll. 5–9. Appellants’ conclusory
arguments that one of ordinary skill in the art would not have combined
Ziebarth’s and Zhang’s teachings to arrive at the claimed invention, without
more, are insufficient to rebut or otherwise establish reversible error in the
Examiner’s conclusion and factual findings in this regard. In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984).
Appellants argue that the Declaration of Michael Ziebarth (“Ziebarth
Declaration” or “Decl.”) is “probative in showing non-obviousness of
Appellants’ invention” and “probative in showing unexpected results”
because “one of ordinary skill would not [have] recognize[d] the unexpected
benefit of using an iron-containing catalyst to improve propylene yields.”
App. Br. 14, 17, 18.
We are not persuaded by Appellants’ arguments regarding the
Ziebarth Declaration. In attempting to overcome a prima facie case of
obviousness by showing unexpected results, the burden rests with
Appellants to establish: (1) that there actually is a difference between the
results obtained through the claimed invention and those of the prior art and
(2) that the difference actually obtained would not have been expected by
one skilled in the art at the time of the invention. See In re Freeman, 474
F.2d 1318, 1324 (CCPA 1973) (citations omitted); In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests
on he who asserts them”).
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Appellants have failed to meet their burden. Appellants do not
identify sufficient evidence to show that there actually is a difference
between the results obtained through the claimed invention and those of the
closest prior art. The experimental examples and results provided at pages 4
through 8 of the Ziebarth Declaration are neither representative of the
teachings of the closest prior art, nor commensurate with the scope of the
claims. As the Examiner points out (Ans. 12), although the claims are
drawn to cover iron content ranging from “about 1 to 10% by weight iron
oxide,” only one of the experimental examples provided in the Ziebarth
Declaration reads on the claimed range, i.e., “Example 2” having 4 wt. %
iron oxide (Ziebarth Decl. 4). Experimental results, however, for the entire
claimed range are not provided.
Appellants also do not identify sufficient evidence that the difference
actually obtained would not have been expected by one skilled in the art at
the time of the invention. As noted by the Examiner (Ans. 12), based on
Zhang’s teaching that the presence of transition metals such as iron increase
selectivity to olefins, especially ethylene and propylene (Zhang, col. 5, ll. 5–
9), it would have been expected by one of ordinary skill in the art at the time
of the invention that the same increase in propylene would result, i.e., the
propylene yield reported at Tables 1 and 2 of the Ziebarth Declaration would
not have been a new or unexpected result to one skilled in the art.
Accordingly, we affirm the Examiner’s rejection of claims 1, 3, 6–14,
and 17 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Ziebarth and Zhang.
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Rejection 2
In response to this rejection,2 Appellants argue that for the reasons
discussed above with respect to Rejection 1, “Ziebarth and Zhang would not
suggest the catalyst composition recited in the process of claim 22 or use of
such a catalyst is a FCC process.” App. Br. 19.
We do not find this argument persuasive for the same reasons
discussed above for affirming Rejection 1. Moreover, as noted by the
Examiner (Ans. 13), Appellants’ argument is misplaced because the
Examiner does not rely on Stuntz for disclosing the claimed catalyst. “Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing
Keller, 642 F.2d at 425).
Accordingly, we affirm the Examiner’s rejection of claims 22, 24, and
26–35 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Ziebarth, Zhang, and Stuntz.
Rejection 3
Appellants do not present separate arguments for the patentability of
claims 5 and 18. We, therefore, select claim 5 as representative, and claim
18 stands or falls with claim 5. 37 C.F.R. § 41.37(c)(1)(iv). Claim 5
depends from claim 1 and adds the limitation “wherein iron phosphate is
present in the matrix.” App. Br. 24 (Claims App’x). The Examiner finds

2 Because Appellants do not argue the patentability of claims 22, 24, and 26–
35 separately, we select claim 22 as representative, and claims 24 and 26–35
stand or fall with claim 22. 37 C.F.R. § 41.37(c)(1)(iv).
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that the combination of Ziebarth, Zhang, Stuntz, and Ao suggests all of
claim 5’s limitations and would have rendered claim 5 obvious. Ans. 7, 8.
Appellants argue that the Examiner’s rejection should be reversed
because “the iron phosphate matrix of Appellants’ invention is not suggested
by Ao, either alone or in combination with the earlier discussed references.”
App. Br. 20, 21. In particular, Appellants argue that “there is no disclosure
of binding a pentasil” and “no suggestion that iron phosphate would be used
alone as a binder.” Id. at 20.
We are unpersuaded by Appellants’ arguments. On the record before
us and contrary to Appellants’ argument, the Examiner’s finding (Ans. 7, 8)
that the combination of Ziebarth, Zhang, Stuntz, and Ao suggests all of
claim 5’s limitations, including that “iron phosphate is present in the matrix”
is supported by a preponderance of the evidence and based on sound
technical reasoning. Ziebarth, Abstract, ¶¶ 38, 41, 58; Zhang, Abstract, col.
3, ll. 32–34, 42–50, col. 5, ll. 5–9; Stuntz ¶¶ 26, 34; Ao, col. 1, ll. 15–35.
As the Examiner found (Ans. 8), Stuntz teaches a catalytic
composition that is “bound together with an inorganic oxide matrix
component . . . so that the FCC catalyst particle is hard enough to survive
interparticle and reactor wall collisions” and that “the matrix material may
also contain phosphorous.” Stuntz ¶ 26. As the Examiner further found
(Ans. 8, 14), Ao teaches a FCC catalytic cracking catalyst which contains a
binder comprising iron phosphate and that the binder is used for the same
purpose as the binder disclosed by Stuntz. Ao, col. 1, ll. 15–35. We discern
no reversible error in the Examiner’s factual findings in this regard.
Moreover, based on the teachings of the prior art, we concur with the
Examiner’s conclusion (Ans. 14) that it would have been obvious to a person
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having ordinary skill in the art at the time of the invention to have
substituted Ao’s binder for Stuntz’s binder because it performs the same
purpose of binding catalytic cracking elements. Ao, col. 1, ll. 15–35; Stuntz
¶ 26. Appellants’ conclusory arguments, without more, are insufficient to
rebut or otherwise establish reversible error in the Examiner’s analysis and
conclusion in this regard. De Blauwe, 736 F.2d at 705.
Accordingly, we affirm the Examiner’s rejection of claims 5 and 18
under 35 U.S.C. § 103(a) as unpatentable over the combination of Ziebarth,
Zhang, Stuntz, and Ao.
Rejection 4
Appellants do not present separate arguments for the patentability of
claims 36–39. We select claim 36 as representative, and claims 37–39 stand
or fall with claim 36. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that
the combination of Zhang and Stuntz suggests all of the limitations of claim
36 and would have rendered claim 36 obvious. Ans. 8–10.
Appellants argue that the Examiner’s rejection based on the
combination of Zhang and Stuntz should be reversed because “there is no
motivation to combine the teachings of the two disclosures.” App. Br. 22.
We do not find this argument persuasive because the Examiner’s
findings and stated rationale for why one of ordinary skill in the art would
have been motivated to combine the teachings of Stuntz and Zhang to arrive
at Appellants’ claimed invention are well-supported by the evidence and
based on sound technical reasoning. Ans. 10 (explaining that it would have
been obvious to the person having ordinary skill in the art at the time of the
invention to have used Stuntz’s mixture of zeolite y and Zhang’s zsm-5
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zeolite for the benefit of more effective cracking); Zhang, col. 3, ll. 14–20,
27–40, 43–50, col. 9, ll. 23–25; Stuntz ¶¶ 15, 24, 25, 32, 34, 35. Appellants’
disagreement with the Examiner’s reason for combining the references,
without more, is insufficient to establish reversible error. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or
problem known in the art can provide a reason for combining the elements in
the manner claimed).
Appellants’ conclusory assertion that Stuntz’s process is not
applicable to Zhang’s pyrolysis process and not suggestive of catalyst
compositions useful in Zhang’s application (App. Br. 21–22), without more,
is also insufficient to establish reversible error in the Examiner’s findings in
this regard. De Blauwe, 736 F.2d at 705.
Appellants argue that the Examiner’s rejection should be reversed
because the Examiner’s finding (Ans. 14) that the prior art’s “0.75% iron
oxide transition metal” reads on the claim 36’s “at least about 1% iron
oxide” limitation is erroneous. App. Br. 22.
We do not find this argument persuasive for the reasons stated by the
Examiner in the Answer (Ans. 8–10, 14, 15). In particular, based on the
record before us, we concur with the Examiner’s finding (Ans. 9, 14, 15)
that the combination of Stuntz and Zhang suggests all of claim 36’s
limitations, including the “at least about 1% iron oxide” limitation. Zhang,
col. 3, ll. 14–20, 27–40, 43–50, col. 9, ll. 23–25; Stuntz ¶¶ 15, 24, 25, 32, 34,
35. The Examiner’s analysis and findings in this regard are supported by a
preponderance of the evidence and Appellants’ argument, without more, is
insufficient to establish reversible error.
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Appellants’ arguments regarding Zhang’s “Example 8,” that Zhang
teaches Ni, Zn, and Cu as being preferred over Fe, and that “Zhang’s
examples disclose[] preferred transition amounts” (App. Br. 22) are not well
taken because, contrary to what these arguments suggest, the examples and
preferred embodiments disclosed in Zhang do not constitute a teaching away
from the broader disclosure that Fe may be included in the composition. In
re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
Accordingly, we affirm the Examiner’s rejection of claims 36–39
under 35 U.S.C. § 103(a) as unpatentable over the combination of Zhang and
Stuntz.
DECISION/ORDER
The Examiner’s rejections of claims 1, 3, 5–14, 17, 18, 22, 24, and
26–39 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).
AFFIRMED