Ex Parte Guichard et al

Patent Trial and Appeal Board

Feb 26, 2019

14005936 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/005,936 12/03/2013
23599 7590 02/28/2019
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
Bertrand Guichard
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PET-2897 3823
EXAMINER
QIAN, YUN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
02/28/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERTRAND GUICHARD, LAURENT SIMON, VALENTINA
DE GRANDI, DELPHINE MINOUX, and JEAN-PIERRE DATH
Appeal2018-004750
Application 14/005,936
Technology Center 1700
Before JEFFREY B. ROBERTSON, GEORGIANNA W. BRADEN, and
JANEE. INGLESE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 5, 6, 8, and 9. (Appeal Br. 4.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
1 This Decision includes citations to the following documents:
Specification filed September 18, 2013 ("Spec."); Final Office Action dated
July 5, 2017 ("Final Act."); Appeal Brief filed December 5, 2017 ("Appeal
Br."); Examiner's Answer dated February 1, 2018 ("Ans."); and Reply Brief
filed April 2, 2018 ("Reply Br.").
2 Appellants identify Total Raffinage Marketing and IFP Energies nouvelles
as the real parties in interest. (Appeal Br. 1.)
Appeal2018-004750
Application 14/005,936
THE INVENTION
Appellants state that the invention relates to a catalyst for
hydrotreatment of hydrocarbon cuts. (Spec. 1, 11. 4--15.)
Claim 1, the only independent claim on appeal, is representative and
reproduced below from the Claims Appendix to the Appeal Brief:
1. A catalyst comprising an amorphous support based on
alumina, at least one Cl---C4 dialkyl succinate, citric acid,
phosphorus and a hydrodehydrogenating function comprising at
least one element from group VIB and at least one element
from group VIII of the Periodic Table, with the Raman
spectrum of the catalyst comprising bands at 990 cm-1, at 974
cm-1 or at both 990 cm-1 and 974 cm-1, characteristic of at least
one Keggin heteropolyanion,[3J the characteristic bands of said
succinate and the principal characteristic bands of citric acid.
(Appeal Br. 12, Claims Appendix.)
REJECTION
The Examiner rejected claims 1, 2, 5, 6, 8, and 9 under 35 U.S.C.
§ 103 as obvious over Jansen et al. (WO 2005/035691 Al, published on
April 21, 2005, "Jansen") and Cholley et al. (US 2008/0194892 Al,
published on August 14, 2008, "Cholley"). (Final Act. 3-5.)
Appellants do not argue the limitations of any claim in particular.
(See Appeal Br. 2-12.) Accordingly, we select claim 1 as representative for
disposition of this appeal. 37 C.F.R. § 4I.37(c)(l)(iv).
3 The Specification describes a Keggin heteropolyanion as having the
formula PXY1104ox- and/or PY1204ox-, where Y is a metal from group VIB
and Xis a metal from group VIII. (Spec 5, 11. 8-10.)
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ISSUE
The Examiner found that Jansen discloses a hydrotreating catalyst
containing cobalt and molybdenum oxides supported on alumina comprising
P20 5, citric acid, and an organic compound comprising at least two oxygen-
containing moieties. (Final Act. 3.) The Examiner found that Jansen fails to
disclose Cl---C4 dialkyl succinate. (Id.) The Examiner found that Cholley
discloses a hydroprocessing catalyst comprising C 1---C4 dialkyl succinate,
preferably dimethyl succinate. (Id.) The Examiner found that Jansen
discloses that the hydrotreating catalyst contains organic compounds
containing at least two oxygen-containing moieties, including carboxyl,
carbonyl, or hydroxyl moieties. (Ans. 7, citing Jansen, 11.) The Examiner
found that Cholley's Cl---C4 dialkyl succinate meets this criteria. (Id.) The
Examiner determined that it would have been obvious to have combined the
Cl---C4 dialkyl succinate in Cholley with Jansen's catalyst because Cholley
discloses that the C 1---C4 dialkyl succinate increases the effectiveness of the
catalyst and reduces the reaction temperature by 5-20 °C. (Final Act. at 3-
4, citing Cholley ,r 12.) The Examiner determined that because the
combination of Jansen and Cholley discloses all of the claimed reagents,
composition, and method of making the catalysts, the physical properties of
the resulting composition including Raman spectrum bands, and Keggin
heteropolyanion, succinate, and citric acid characteristics would necessarily
follow, as the particular species giving rise to the Raman spectrum bands
would be formed in-situ. (Id. at 4, 9; Ans., 7-8.)
Appellants argue that neither Jansen nor Cholley disclose all of the
components of the catalyst recited in the claims. (Appeal Br. 3-5.)
Appellants argue that the Examiner's position that in combining the
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teachings of Jansen and Cholley, one of ordinary skill would have arrived at
the Raman spectrum characteristics recited in the claims is in error, because
one of ordinary skill in the art would have had to pick and choose specific
components from generic disclosures without specific direction, and there is
no prior art embodiment that would result in the characteristic Raman
spectrum recited in the claims. (Appeal Br. 5-8.) Appellants argue that data
in the Specification and in the Declaration of Jean-Pierre Burzynski
(Declaration under 37 C.F.R. § 1.132 dated March 10, 2017, "Burzynski
Declaration") show the distinct nature and unexpected advantages of the
claimed catalyst. (Appeal Br. 8-11, Reply Br. 1-3.)
Accordingly, the issue on appeal is:
Considering the evidence on the record as a whole, did the Examiner
reversibly err in determining that the catalyst recited in claim 1, and in
particular a catalyst "with the Raman spectrum of the catalyst comprising
bands at 990 cm-1, at 974 cm-1 or at both 990 cm-1 and 974 cm-1,
characteristic of at least one Keggin heteropolyanion, the characteristic
bands of said succinate and the principal characteristic bands of citric acid"
would have been obvious over Jansen and Cholley?
DISCUSSION
We are not persuaded by Appellants' argument that neither Jansen nor
Cholley individually discloses a catalyst having the components recited in
claim 1, because the Examiner's rejection is based on the combination of
Jansen and Cholley, not each individually. In responding to a prima facie
case of obviousness, one cannot show nonobviousness by attacking
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references individually where the rejections are based on combinations of
references. In re Keller, 642 F.2d 413,426 (CCPA 1981).
We also are not persuaded that the Examiner's combination requires a
selection among generic disclosures of each reference with many
possibilities.
Jansen discloses a hydrotreating catalyst including a Group VI metal
and a Group VIII, where molybdenum is especially preferred as the Group
VI metal and nickel and/or cobalt is preferred as the Group VIII metal.
(Jansen, 5, 11. 22-26.) Jansen discloses the presence of phosphorus is
preferred to improve hydrodenitrogenation activity of the catalyst. (Jansen,
6, 11. 1-3.) Jansen discloses that special preference is given to alumina as the
catalyst carrier. (Jansen 6, 11. 4--12.) Jansen discloses the presence of an
acid, and that citric acid is particularly preferred. (Jansen, 10, 1. 6.) Jansen
discloses the addition of an organic additive, and in particular, an organic
additive with at least two oxygen-containing moieties, such as a carboxyl,
carbonyl, or hydroxyl and 2-10 carbon atoms are preferred. (Jansen, 11, 11.
1-7.) In addition, Jansen exemplifies catalysts having molybdenum, cobalt,
phosphorus, an alumina carrier, citric acid, and polyethylene glycol.
(Jansen, 18, 1. 29-19, 1. 10, Ex. 1.)
Cholley discloses that the addition of an organic compound in
hydrotreating catalysts including metals of Groups VIB and VIII on an
alumina carrier increases the effectiveness of the catalysts in desulfurization
and in denitrogenation, where Cholley specifically prefers dimethyl
succinate ( an organic additive with at least two oxygen-containing moieties)
as the organic compound. (Cholley ,r,r 10, 12, 17, 18; Ans. 7-8.) Cholley
discloses that the organic compound may be introduced in the presence of an
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acid, where citric acid is among the particularly preferred acids. (Cholley
,r 29; Ans. 7-8.)
Thus, contrary to Appellants' arguments, one of ordinary skill in the
art would not have to pick and choose from generic disclosures in each of
the references without direction, but rather would have had reason to arrive
at the catalysts recited in claim 1 based on preferred and exemplified
embodiments of each reference, with a specific reason for utilizing dimethyl
succinate in Cholley in the catalyst system of Jansen, namely, improved
catalyst activity.
Regarding the presence of Raman spectrum of the catalyst including
bands at 990 cm-1, at 974 cm-1 or at both 990 cm-1 and 974 cm-1,
characteristic of at least one Keggin heteropolyanion, the characteristic
bands of said succinate and the principal characteristic bands of citric acid as
recited in claim 1, we are not persuaded by the Appellants' argument that the
Examiner committed reversible error by determining that the spectrum
characteristics would be a natural result of the combination. As discussed
above, the Examiner provided sufficient rationale to use the dimethyl
succinate disclosed in Cholley in the catalysts of Jansen, finding that the
combination of Jansen and Cholley discloses all of the claimed reagents,
composition and method of making the catalysts. (Final Act. 4.)
Appellants have not presented a persuasive argument that in
combining Jansen and Cholley, one of ordinary skill in the art would not
have obtained the Raman spectrum characteristics as claimed as a natural
result of the combination. Par Pharmaceutical, Inc. v. TWI
Pharmaceuticals, Inc., 773 F.3d 1186, 1996 (Fed. Cir. 2014) ("to establish
the existence of a claim limitation in the prior art in an obviousness
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analysis-the limitation at issue necessarily must be present, or the natural
result of the combination of elements explicitly disclosed by the prior art.").
Turning to the comparative evidence provided by Appellants,
Appellants point both to examples in the Specification, which compare
catalysts containing cobalt, molybdenum, and phosphorus without citric acid
and dimethyl succinate (Catalysts B 1 and B2) to catalysts containing cobalt
molybdenum, and phosphorus with citric acid (and acetic acid) and dimethyl
succinate according to the invention (Catalysts Cl, C2, Cl bis, C2bis) and
examples in the Buryznski Declaration, which compare a catalyst according
to the invention (Catalyst D2) including cobalt, molybdenum, and
phosphorus, citric acid, acetic acid, and dimethyl succinate with a catalyst
according to Jansen (Catalyst E2) including cobalt, molybdenum, and
phosphorus, citric acid, and polyethylene glycol. (Spec. 28-29, Table 1;
Buryznski Deel. 2--4.)
The Examiner determined that the results were not commensurate in
scope with the claims because the results from the examples in the
Specification as shown in Table 1 include only one specific phosphorus
precursor, one amorphous support, one molybdenum compound as the
Group VIB compound and one cobalt compound as the Group VIII
compound. (Ans. 4--5.) The Examiner also observed that claim 1 does not
recite acetic acid, whereas Table 1 also includes examples with acetic acid,
and Example 6 in the Burzynski Declaration contains only citric acid and
polyethylene glycol. (Ans. 4; Burzynski Deel. 3--4.) Example 5 in the
Burzynski Declaration, which is allegedly representative of the claimed
invention, also employs acetic acid. (Burzynski Deel. 2-3.)
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Appellants argue that the data is representative of the claim scope and
compared to the closest prior art because:
( 1) it shows that the advantage of the invention is a result of the point
of novelty of the claims over the prior art; and (2) the claims are very
narrow at this point of novelty, e.g., the specific combination of the
specific Cl---C4 dialkyl succinate, citric acid and phosphorus
components and the very specific result of the Raman spectrum of the
catalyst comprising bands at 990 cm-1, at 974 cm-1 or at both 990 cm-1
and 974 cm-1.
(Appeal Br. 11.)
Appellants further argue "[t]he comparison is made of embodiments
with the only distinction being at the point of novelty, i.e., the specific use of
a dialkyl succinate or not. All other aspects are the same. Thus, the
showing is commensurate with the full scope of the claims because the
different result is clearly a result of the point of novelty over the closest prior
art." (Reply Br. 3; see Appeal Br. 11.)
In other words, Appellants contend that the presence of C 1---C4 dialkyl
succinate is the reason for the difference in activity and the point of novelty
leading to the unexpected results, such that by showing results of catalysts
according to the invention including dimethyl succinate, compared to
catalysts of Jansen, which do not include dimethyl succinate, Appellants
have both fulfilled a showing that the results are reasonably commensurate
in scope with the claims and have compared to the closest prior art. We
agree with Appellants that the appropriate comparison to be made is not with
the combined teachings of the prior art (Reply Br. 2, 3), but we are not
persuaded that the results presented by Appellants are sufficient to overcome
the evidence in favor of obviousness.
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The problem with Appellants' argument is that, as discussed above,
Cholley expressly discloses, in a similar catalyst system, the presence of
dimethyl succinate as a preferred compound to increase catalyst activity.
(See Cholley ,r,r 12, 17.) Although Appellants argue that because Cholley
does not disclose the presence of phosphorus, it cannot form a Keggin
heteropolyanion (Appeal Br. 4), given Appellants' statements regarding the
point of novelty in the present claims relating to the presence of C 1---C4
dialkyl succinate, we are not persuaded that the increased activity shown in
the data presented by Appellants would have been unexpected, and is
necessarily related to the presence of the Keggin heteropolyanion. The mere
lack of formation of a Keggin heteropolyanion structure in Cholley is not
indicative of any unexpected results, because as Appellants' acknowledge,
one of ordinary skill in the art would not have expected such a structure to
form in the absence of phosphorus. (Appeal Br. 4.) Indeed, in view of
Cholley's disclosure of increased catalytic activity in the presence of
dimethyl succinate, it appears that Cholley, not Jansen, is the closest prior
art, such that Appellants should have provided comparative evidence with
respect to Cholley in order to show unexpected results.
Even if Jansen (which does not contain the dialkyl succinate) and
Cholley (which does not contain phosphorus) are considered to be equally
close to the catalysts recited in the claims because each omit one of
components recited in claim 1, this does not excuse Appellants from
presenting comparative evidence with respect to both references, because
each reference differs from the claims in different ways. In re Johnson, 7 4 7
F.2d 1456, 1461 (Fed. Cir. 1984) (explaining that the "closest prior art" may
include more than one prior art reference, and to establish unexpected
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results, an applicant is required to compare the claimed subject matter with
the relevant subject matter of each of the closest prior art references, unless
"the teachings of the closest prior art references are sufficiently similar so
that the testing of one compound showing unexpected results would provide
the same information as to the relevant teachings of the other equally close
references.").
Thus, we are of the view that the evidence in favor of obviousness is
strong and outweighs the evidence against obviousness presented by
Appellants.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 5, 6, 8, and
9.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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