Ex Parte Ewert et al

Board of Patent Appeals and Interferences

Jul 26, 2012

10800471 (B.P.A.I. Jul. 26, 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.
10/800,471 03/15/2004 Warren M. Ewert 033890US01 (4081-14200) 3183
37814 7590 07/26/2012
CHEVRON PHILLIPS CHEMICAL COMPANY
5601 Granite Parkway, Suite 750
PLANO, TX 75024
EXAMINER
MCAVOY, ELLEN M
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
07/26/2012 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 WARREN M. EWERT,
BRUCE E. KREISCHER, and RONALD D. KNUDSEN
__________

Appeal 2011-001064
Application 10/800,471
Technology Center 1700
____________

Before CHARLES F. WARREN, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001064
Application 10/800,471

2
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 3-6, 10-13, 15-18, 20-31, 35-37, 39, 41-46, and 48-65. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellants’ invention is said to be directed to a method of
deactivating the catalyst in the effluent of an oligomerization reactor under
conditions which prevent or decrease the formation of hydrogen halide acids
during downstream processing and thereby prevent or decrease process
equipment corrosion caused by such acids (Spec. para. [4]).
Claim 1 is illustrative:
1. A process to deactivate a halide-containing olefin
oligomerization catalyst system and inhibit or limit the
decomposition of the deactivated catalyst system during
recovery of an olefin oligomerization product comprising the
steps of:
a) forming an intermediate stream by contacting an
olefin oligomerization reactor effluent stream which comprises
olefin product(s), catalyst system, and heavies with an alcohol
that is soluble in any portion of the reactor effluent stream
thereby deactivating the catalyst system; and
b) separating the intermediate stream of step (a)
into at least one product stream comprising the olefin
oligomerization product and at least one heavies stream;
wherein the separation comprises a distillation
comprising a reboiler and material passed through the reboiler
is maintained below about 190 °C, and
wherein the catalyst system comprises a chromium
source, a pyrrole-containing compound and an alkylaluminum
compound and wherein the alcohol is added in an amount to
effect a mole alcohol to mole aluminum ratio between about 2.5
and about 1.5.
Appeal 2011-001064
Application 10/800,471

3

Appellants appeal the following rejection:
Claims 1, 3-6, 10-13, 15-18, 20-31, 35-37, 39, 41-46, and 48-65 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Lashier (US 5,689,028
issued Nov. 18, 1997), Araki (US 5,750,816 issued May 12, 1998) or
Kreischer (US 6,380,451 B1 issued Apr. 30, 2002).

Appellants argue the claims as a group, focusing on the reboiler
temperature limitation common to the subject matter of independent claims
1, 18, 37 and 57 (App. Br. 11-32). We select claims 1 and 18 as
representative of the group.

ISSUES
1. Did the Examiner reversibly err in determining that the subject matter
of claims 1, 37 and 57 that includes the requirement that “the reboiler
is maintained below about 190°C” would have been a matter of
routine optimization of the distillation process of Lashier, Araki or
Kreischer? We decide this issue in the negative.
2. Did the Examiner reversibly err in finding that Appellants’ evidence
of non-obviousness is not probative because it is not commensurate in
scope with the claimed invention? We decide this issue in the
negative.
3. Did the Examiner reversibly err in finding that Lashier, Araki or
Kreischer teach by their silence on the water content in alcohol, the
step of “contacting an alcohol with an adsorbent capable of adsorbing
water” as recited in claim 18? We decide this issue in the affirmative.
Appeal 2011-001064
Application 10/800,471

4

FINDINGS OF FACT AND ANALYSES
Issue (1)
Appellants argue that Lashier, Araki or Kreischer fail to teach or
suggest temperature at which the material is passed through a distillation
reboiler (App. Br. 20-21). Appellants contend that the Examiner’s rejection
is based on the mistaken understanding of the prior art as teaching that the
reaction conditions of Lashier, Araki or Kreischer are the same as the
product recovery conditions (id. at 21-23). Appellants argue that the applied
prior art differentiates between reaction conditions and product recovery
conditions. Id. Appellants further argue that Araki’s exemplification of
evaporator temperatures of 200°C and 230°C constitutes a teaching away
from Appellants’ reboiler temperature of below about 190°C (id. at 24-28).
Appellants further argue that the Examiner’s statement that it appears that
Lashier, Araki or Kreischer “most likely” uses the claimed reboiler
temperature, as no catalyst decomposition or corrosion of the apparatus is
taught by the prior art, is based on invalid logic (id. at 28-31). Appellants
contend that the Examiner’s rejection is based on an implicit or inherent
disclosure of the claimed reboiler temperature in Lashier, Araki or
Kreischer, which has not been supported (Reply Br. 6-8, 10-11). Appellants
argue that the Examiner cannot rely on the “general conditions” as a basis
for optimization because the art does not teach a reboiler temperature (id. at
12-13). Appellants further argue that the Examiner’s statement that one of
ordinary skill in the art would know the appropriate temperature to operate a
reboiler is based on official notice and is not supported (id. at 8-10).
Appeal 2011-001064
Application 10/800,471

5
We have fully considered Appellants’ arguments. We find that the
preponderance of the evidence favors the Examiner’s finding of
obviousness. The Examiner’s findings may be found on pages 3-11 of the
Answer. Contrary to Appellants’ arguments, we understand the Examiner’s
position to be properly based on In re Aller, 220 F.2d 454 (CCPA 1955).
The Examiner’s rejection states that the applied prior art teaches distillation
to separate the catalyst system from the olefin oligomer, which one of
ordinary skill in the art would have known to include a reboiler that is
affected by pressure and temperature, such that one skilled in the art would
have determined the temperature of the reboiler in the distillation step
through routine experimentation (Ans. 7).
Appellants contend that the Examiner acknowledges that the “general
conditions” referred to by the court in Aller have not been shown to be met
in the instant rejection involving the claimed subject matter. Specifically,
Appellants’ contend that the “general conditions” include that “the
separation comprises a distillation comprising a reboiler and material passed
through the reboiler is maintained below about 190°C” and “inhibit[ing] or
limit[ing] the decomposition of the deactivated catalyst system during
recovery of an olefin oligomerization product” (Reply Br. 12-13). However,
the Examiner finds that the distillation steps of Lashier, Araki and Kreischer
do use a reboiler (Ans. 3-6). The Examiner finds, and we agree, that one of
ordinary skill in the art would have known that distillation with a reboiler is
controlled by temperature and pressure. Appellants do not specifically
dispute that a reboiler is used during the distillation steps of Lashier, Araki
or Kreischer or that temperature and pressure are variables to be controlled
in operating the reboiler.
Appeal 2011-001064
Application 10/800,471

6
While the Examiner concedes that the prior art does not disclose the
product recovery conditions that include the specifics of the distillation
process (id. at 10), such a concession does not detract from the stated
obviousness rejection that is based on routine experimentation of a known
reboiler variable (i.e., temperature) to arrive at a temperature for the reboiler
within the claimed temperature range. Contrary to Appellants’ arguments
we do not perceive the Examiner’s rejection to be based upon confusion
between reaction conditions and product recovery conditions, inherency of
the reboiler temperature, invalid logic, or official notice of operating
conditions.
Regarding Appellants’ argument that Araki teaches away from the
claimed reboiler temperature, we agree with the Examiner that Araki’s
exemplification of particular evaporator temperatures does discourage one of
ordinary skill in the art from the claimed range based on Araki’s broader
disclosure (id. at 10-11). Appellants do not respond or contest this finding
of the Examiner (Reply Br. generally).
Therefore, we determine that the Examiner has established a prima
facie case of obviousness with regard to claims 1, 37 and 57. We now
consider Appellants’ evidence of non-obviousness (e.g., criticality and
result-effective variable evidence).

Issue (2)
Appellants contend that the evidence in their Specification
demonstrates that the reboiler temperature is a result-effective variable and
critical to inhibit or limit decomposition of the catalyst (App. Br. 16-20;
Reply Br. 13-16).
Appeal 2011-001064
Application 10/800,471

7
The Examiner finds that Appellants’ evidence includes only a single
alcohol (i.e., 2-ethyl-1-hexanol), which is not commensurate in scope with
the claim scope that includes any alcohol (Ans. 8-9). The Examiner finds
that Appellants have not shown that the reboiler temperature is a result-
effective variable1 for all the possible alcohols which may be used in the
claimed process. Id. We agree.
It is well settled that a showing of criticality (i.e, unexpected) results
must be commensurate in scope with the claimed invention. In re Clemens,
622 F.2d 1029, 1036 (CCPA 1980). Appellants have not shown that the
alleged criticality or result-effective nature of the reboiler temperature would
occur for a sufficient number of alcohols included in the broadly worded
claim language. We note that Appellants have not even alleged that results
similar to those achieved with the 2-ethyl-1-hexanol would be achieved for
lower chain length alcohols (e.g., methanol or ethanol).
On this record, Appellants’ evidence is not commensurate in scope
with the claimed subject matter and is not probative of nonobviousness. On
this record, we affirm the Examiner’s rejection of claims 1, 3-6, 10-13, 15-
17, 22, 23, 26, 37, 39, 41-46, 48-50, 52, 54-62, 64, and 65 over Lashier,
Araki or Kreischer.

1 The Examiner treats the result-effective variable argument in the same
manner as Appellants’ argument of criticality in the temperature. We agree
with such treatment, as Appellants’ result-effective variable argument seems
to be that Appellants discovered that the temperature of the reboiler is
critical or result-effective for inhibiting corrosion and catalyst
decomposition.
Appeal 2011-001064
Application 10/800,471

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Issue (3): Claim 18
Appellants argue that claim 18 requires a step of “contacting an
alcohol with an adsorbent capable of adsorbing water”, which the Examiner
has not shown to be taught or suggested by the applied prior art (App. Br.
32).
The Examiner responds that the art teaches using 1-hexanol, 2-
hexanol, 3-hexanol, etc. such that “it is not clear how this limitation of
contacting the alcohol with an adsorbent capable of adsorbing water
distinguishes over the prior art” (Ans. 12). The Examiner finds that the prior
art is silent regarding water in the alcohols, so the Examiner posits that
water-free alcohols are used (id. at 4).
The preponderance of the evidence favors Appellants’ argument of
nonobviousness. Claim 18 expressly recites a step of “contacting an alcohol
with an adsorbent capable of adsorbing water”, which the Examiner has not
addressed or shown where the applied prior art teaches or suggest such a
step. The Examiner has failed to establish a prima facie case of obviousness
with regard to claim 18.
On this record, we reverse the § 103 rejection of claims 18, 20, 21, 24,
25, 27-31, 35, 36, 51, 53, and 63 over Lashier, Araki or Kreischer.

DECISION
The Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

Appeal 2011-001064
Application 10/800,471

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ORDER
AFFIRMED-IN-PART

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