Ex Parte Kabu et al

Patent Trial and Appeal Board

Jun 23, 2016

10564503 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/564,503 01/13/2006 Y asuhiro Kabu
22850 7590 06/27/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
284585USOPCT 8831
EXAMINER
XU,XIAOYUN
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ASUHIRO KABU,
YOSHIMASA ANDO, and YOSHIYUKI TANIGUCHI
Appeal2014-006753
Application 10/564,503
Technology Center 1700
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and
JULIA HEANEY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 3, 4, and 6-15 of Application
10/564,503 as anticipated under 35 U.S.C. § 102(e) or, in the alternative,
under 35 U.S.C. § 103(a) as obvious. Final Act. (August 22, 2013).
Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
1 Misubishi Rayon Co., Ltd. is identified as the real party in interest. Appeal
Br. 2.
Appeal2014-006753
Application 10/564,503
We have jurisdiction under 35 U.S.C. § 6.2 We held a hearing in this appeal
on June 17, 2016.
For the reasons set forth below, we AFFIRM-IN-PART.
BACKGROUND
The '503 Application describes a method for supplying reaction gases
in a catalytic gas-phase oxidation reaction in a manner that changes the
composition of the gas at the inlet of the catalytic gas-phase oxidation
reactor in a manner that avoids creating an explosive mixture. Spec. 1-2.
Claim 1 is representative of the '503 Application's claims and is
reproduced below:
1. A method for supplying reaction gases in a catalytic gas-
phase oxidation reaction in which at least a material to be
oxidized and a gas containing molecular oxygen are mixed and
the resultant mixture is supplied to a catalytic gas-phase
oxidation reactor,
wherein a feed rate of the material to be oxidized and a feed
rate of the gas containing molecular oxygen are adjusted,
without shutting off a feed, so that when a composition of a gas
at the inlet of the catalytic gas-phase oxidation reactor is
changed
from a reactive composition A point, which is
the concentration of the material to be
oxidized: R(a), and
the concentration of oxygen: O(a)
2 We have decided a previous appeal in this application. See Ex parte
Mitsubishi Rayon Co., Ltd., Appeal 2012-001756 (March 7, 2013) (available
at http://l.usa.gov/lOuOdXO).
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Appeal2014-006753
Application 10/564,503
represented by plotting a concentration of the
material to be oxidized and a concentration of
oxygen in the gas at said inlet
to a reactive composition B point, which is
the concentration of the material to be
oxidized: R(b ), and
the concentration of oxygen: O(b ),
with a proviso that the composition A point and the
composition B point are compositions outside a range in
which the material to be oxidized and oxygen possibly
react to cause explosion, which range is an explosion
range, and R(a) i- R(b) and O(a) i- O(b ),
compositions on the way of the change from the composition A
point to the composition B point fall outside the explosion
range,
wherein the material to be oxidized is isobutylene, tertiary butyl
alcohol or methacrolein,
wherein one of the feed rates of the material to be oxidized and
the gas containing molecular oxygen is adjusted in advance by
increasirn.! it or decreasirn.! it to r sic. in l the direction awav from
'-1 '-1 L / ....I el
the explosion range and then the other feed rate is adjusted by
increasing it or decreasing it to reach to the composition B point
so that the compositions on the way of the change from the
composition A point to the composition B point fall outside the
explosion range.
Appeal Br. Claims App. i-ii (emphasis, some paragraphing, and indentation
added).
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Appeal2014-006753
Application 10/564,503
REJECTIONS
On appeal, the Examiner maintains the following rejection:
1. Claims 1, 3, 4, and 6-15 are rejected either under 35 U.S.C.
§ 102(e) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as unpatentable over Hammon. 3 Final Act. 2.
The Examiner also added a new ground of rejection in the Examiner's
Answer:
2. Claims 1, 3, 4, and 7-15 are rejected under 35 U.S.C. § 112, iJ 1 as
failing to comply with the written description requirement.
Answer 7.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 3, 4, and 6-15 as either
anticipated by or, in the alternative, unpatentable over Hammon. Final
Act. 2. We address each of these grounds of rejection separately. For
reasons vvhich shall become apparent, vve confine our analysis to
independent claims 1 and 6.
Anticipation
Claim 1. Appellants argue that the anticipation rejection of claim 1
should be reversed because claim 1 is directed to a method that adjusts the
feed rates of the material to be oxidized and the molecular oxygen to change
the composition of the reactant mixture without shutting off a feed. Appeal
Br. 12-20. Appellants argue that Hammon describes a process in which the
molecular oxygen feed is cut off to avoid creating an explosive mixture. Id.
3 US 2004/0015012 Al, published January 22, 2004.
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Appeal2014-006753
Application 10/564,503
at 12-16. Appellants contend that Hammon does not describe adjusting the
reactant mixture's composition by any method other than shutting off one or
both of the reactant feeds. Id.
The Examiner contends that Hammon describes adjusting the reactant
mixture's composition without shutting off the feed because Hammon
describes circulation of other gases within the reactor to facilitate restarting
the reaction. Final Act. 4 (citing Hammon iii! 133, 157). According to the
Examiner, during this circulation, the gas-phase reaction continues, thereby
decreasing the molecular oxygen concentration. Id. When the molecular
oxygen feed is reopened, the concentration of molecular oxygen increases,
and the reaction continues at a different molecular oxygen concentration. Id.
Thus, contends the Examiner, with respect to the continuous reaction,
Hammon does not describe shutting off a feed to the reactor. Id.
We reverse the anticipation rejection because we find that the
Examiner erred. As Appellants argue, the only method for changing the
reaction mixture's composition as described by Hammon is to shut off the
feed of one or both of the reactants. Hammon, therefore, does not describe a
process that falls within the scope of claim 1.
In view of the foregoing, we reverse the rejection of claims 1, 3, 4,
and 7-15 as anticipated by Hammon.
Claim 6. Independent claim 6 is directed to a computer-readable
medium that makes a computer function as a means for showing on a display
a compositional range for the reactants that might cause an explosion and the
current composition of the reactant mixture. Appeal Br. 4. Appellants do
not present any argument for reversal of the rejection of claim 6. See
generally, id. at 12-28. Moreover, claim 6 is not directed to display of the
explosive range and reaction mixture composition while the reactant mixture
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Appeal2014-006753
Application 10/564,503
composition is adjusted from point A to point B without shutting off a.feed.
See Claims Appendix at iii-iv. Due to Appellants' lack of argument with
respect to claim 6, we are constrained to affirm the Examiner's rejection.
Obviousness
Claim 1. The Examiner concluded, in the alternative to the
anticipation rejection, that the subject matter of claim 1 would have been
obvious to a person of ordinary skill in the art at the time of the invention.
Final Act. 2--4. In particular, the Examiner found that "it would have been
obvious to a person skilled in the art to reduce the feed rate instead of [using
the] cut-out mechanism, in order to have ... fine control to [sic, of] the
reaction." Id. at 4.
Appellants argue that this finding is not supported by the evidence of
record. Appeal Br. 16-20. In particular, Appellants argue that "Hammon
does not teach or reasonably suggest any 'fine control' and the only support
for 'fine control' is found in Applicant's own disclosure, which it appears
the Examiner has improperly relied on." Id. at 18.
Having reviewed the record in this appeal, we are persuaded by
Appellants' argument. We cannot sustain the Examiner's rejection of claim
1 under§ 103. We, therefore, also reverse the rejection of claims 3, 4, and
7-15 as unpatentable over Hammon.
Claim 6. As discussed above, we have affirmed the Examiner's
rejection of claim 6 as anticipated. We, therefore, need not and do not
express an opinion regarding the Examiner's alternative conclusion that
claim 6 is unpatentable over Hammon.
Rejection 2. In the Answer, the Examiner entered a new ground of
rejection: Claims 1, 3, 4, and 7-11 were rejected for failing to comply with
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Appeal2014-006753
Application 10/564,503
the written description requirement. Answer 7. In particular, the Examiner
found that the phrase "without shutting off the feed," which was added to
claim 1 by amendment, is not supported by the '503 Application's
Specification. Id.
We cannot sustain this rejection. The Examiner's explanation of the
rejection fails to distinguish between Appellants' description of the control
system that performs the claimed method in normal use and operation of the
system in the event of an unexpected change in the reactant mixture's
composition. See Reply Br. 2-6.
CONCLUSION
For the reasons set forth above, we cannot sustain the Examiner's
rejection of claims 1, 3, 4, and 7-15 of the '503 Application as either
anticipated by or obvious in view of Hammon. Appellants, however, have
not presented sufficient argument with respect to independent claim 6 to
justify reversal of the Examiner's rejection. \Ve, therefore, affirm the
rejection of claim 6 as anticipated by Hammon.
We also reverse the rejection of claims 1, 3, 4, and 7-11 for failing to
comply with the written description requirement of§ 112, ,-i 1.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED-IN-PART
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