Ex Parte Karches et al

Patent Trial and Appeal Board

Dec 13, 2018

13255111 (P.T.A.B. Dec. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/255, 111 09/07/2011 Martin Karches
22850 7590 12/17/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
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.
385656US99PCT 3855
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
12/17/2018 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
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN KARCHES, KATI BACHMANN,
MARTIN SESING, BERND RUMPF, OLIVER ODENWALD,
and LOTHAR SEIDEMANN
Appeal2018-000504
Application 13/255,111
Technology Center 1700
Before CATHERINE Q. TIMM, BRIAND. RANGE, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-000504
Application 13/255, 111
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection of claims
1-5, 7-20, and 22. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a process for preparing chlorine by what is
known as the Deacon process in a fluidized-bed reactor. Spec. 2:33-35.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A process for preparing chlorine, comprising an oxidation
reaction of hydrogen chloride in the presence of a heterogeneous
particulate catalyst by the Deacon process in a fluidized-bed
reactor, the process further comprising:
removing the heat of the reaction by evaporative cooling
with water, wherein the water circulates in tubes of a shell-and-
tube heat exchanger,
feeding the water from a steam drum through a feed line
to one end of the tubes of the shell-and-tube heat exchanger,
heating the water in the tubes by uptake of the heat of the
reaction and partly vaporizing to give a water/steam mixture,
recirculating the water/steam mixture at the other end of
the tubes of the shell-and-tube heat exchanger through a return
line to the steam drum,
wherein the maximum pressure for which the
fluidized-bed reactor is designed to allow for the event of
rupture of a tube of the shell-and-tube heat exchanger is
minimized by at least one valve which, in the event of a
1 The real party in interest is identified as "BASF SE." Appeal Brief of
March 23, 2017 ("App. Br."), 2. In this opinion, we also refer to the Final
Action of October 21, 2016 ("Final Act."), the Examiner's Answer of
August 14, 2017 ("Ans."), and the Reply Brief of October 13, 2017 ("Reply
Br.").
2
Appeal2018-000504
Application 13/255, 111
pressure increase as a result of rupture of a tube, closes the
feed line and the return line, and
wherein the at least one valve is installed in the
feed line and the return line and thereby prevents water
flowing from the steam drum into the fluidized-bed
reactor, and wherein the at least one valve is configured
as a quick-closing valve,
wherein the maximum designed pressure of the
fluidized-bed reactor is from 11.2 to 22.3 bar gauge, and
wherein nonreturn valves are additionally provided
in the return line.
Claims Appendix (App. Br. 20-21 ).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Coudray
Sesing 476
Lee
Walsdorff
Sesing 572
us 3,205,140
WO 2007/085476 A2
us 5,869,011
US 2007 /0202035 Al
US 2009/0304572 Al
Sept. 7, 1965
Aug.2,2007
Feb.9, 1999
Aug.30,2007
Dec. 10, 2009
Perry's Chemical Engineers' Handbook, gth Ed. ("Perry").
REJECTI0NS 2
The Examiner rejects dependent claim 22 under 35 U.S.C. 112(a) or
35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. Final Act 4.
2 A non-enablement rejection of claims 1-5 and 7-20 has been withdrawn
and not before us. See Final Act. 2, Ans. 9.
3
Appeal2018-000504
Application 13/255, 111
The Examiner rejects claims 1-5, 7-20, and 22 under 35 U.S.C.
103 (a) as being unpatentable over Walsdorff in view of Coudray, Se sing
572, optionally further in view of Perry and Lee. Final Act. 5
OPINION
Written Description
Claim 22 depends from claim 1 and additionally recites: "stopping the
reaction when the at least one valve installed in the feed line and the return
line is closed due to the rapture [ sic, rupture] of a tube of the heat
exchanger." 3
In arguing that the Examiner reversibly erred in rejecting claim 22 for
failure to comply with the written description requirement, Appellants point
to Specification 1 :39-2:25 as support. App. Br. 11. The cited passage,
however, provides two options to address the safety concerns resulting from
a ruptured tube, neither of which involves stopping the reaction as recited in
claim 22. More specifically, the Specification provides that when a tube
ruptures, the first option is "to build the reactor so that it is intrinsically safe"
whereas the alternative option is "to provide a bursting disk" for steam to
escape. Spec. 2: 18-25.
The Examiner finds that the Specification does not support the
Appellants' argument that stopping the reaction when a tube ruptures is the
only alternative to continuing the reaction. Ans. 10. The passage in the
Specification described in the preceeding paragraph does not support
Appellants' argument that "it is apparent, common, and/ or inherent that the
3 We consider the recited term "rapture" a typographical error and
understand the correct term to be "rupture" instead.
4
Appeal2018-000504
Application 13/255, 111
reaction is stopped" when there is a ruptured tube in the heat exchanger. See
App. Br. 12; see also Reply Br. 3. 4
In this case, Appellants have not identified reversible error in the
Examiner's finding of the nonexistence of support in the Specification for
claim 22. Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007) ("Adequate
written description means that, in the specification, the applicant must
convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the [ claimed] invention .....
When no such description can be found in the specification, the only thing
the PTO can reasonably be expected to do is to point out its nonexistence.")
(internal citation omitted).
4 In the opening brief, Appellants' argument for the written description
rejection does not refer to the declaration by Dr. Kati Bachmann. See App.
Br. 9-12. An argument raised for the first time in a Reply Brief- in this
case, the argument based on Dr. Bachmann's declaration for the written
description rejection (Reply Br. 3) as well as the argument based on the use
of heat exchangers (Reply Br. 4, 8-11), is waived if Appellants do not
explain why it could not have been raised previously. See Ex parte
Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining that
arguments and evidence not timely presented in the principal Brief will not
be considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Principal
Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative)
("Properly interpreted, the Rules do not require the Board to take up a
belated argument that has not been addressed by the Examiner, absent a
showing of good cause."). In this case, Appellants have not made such a
showing, and we accordingly decline to consider these arguments raised for
the first time in the Reply Brief.
5
Appeal2018-000504
Application 13/255, 111
Obviousness
Appellants argue that the Examiner reversibly erred in rejecting claim
15 for various reasons, we address each below.
Appellants acknowledge that the reaction recited in claim 1 takes
place at a pressure range of 2-8 bar. App. Br. 12. Appellants also
acknowledge that the design pressure of a reactor should be higher than the
process pressure - in this case, higher than 8 bar. Id; Reply Br. 5 ("The
design pressure of the reactor should be higher than the process pressure of
the catalytic reaction."). Appellants, however, argue that the Examiner
reversibly erred in finding that the prior art teaches or suggests the recited
"maximum designed pressure of the fluidized-bed reactor is from 11.2 to
22.3 bar gauge" because the maximum design pressure of the prior art
reactor is 66 bar which is higher than 8 bar. Id. at 12-13.
The Examiner reasons that it is undisputedly known to use safety
features such as a bursting disk "to relieve the pressure before the design
pressure is reached so that the reactor would not be damaged by the
overpressure." Ans. 11, 12 ( citing Perry for the teaching that it is known to
optimize parameters such as design pressure for safety reasons); see also
App. Br. 11-12 (citing examples at Spec. 5:30-40 which describe that a
reactor without a bursting disk would have a design pressure of 66 bar which
is higher than that of a reactor with such a safety feature). The Examiner
5 Appellants do not present arguments separate from those for claim 1 for the
obviousness rejection of claims 2-5, 7-20, and 22. App. Br. 12-19. These
claims therefore stand or fall with claim 1 for the obviousness rejection. See
id.; see also 37 C.F.R. § 4I.37(c)(l)(iv) (2013). We note that Appellants
raise, for the first time in the Reply Brief, an argument regarding claims 11-
13. See Reply Br. 9. Based on the analysis in footnote 4, we decline to
consider this argument.
6
Appeal2018-000504
Application 13/255, 111
concludes that because claim 1 does not exclude the use of a bursting disk or
other safety features, a skilled artisan would have discovered an optimum
value of a result effective variable - for example, by lowering the design
pressure of 66 bar and possibly adding a bursting disk in this case - to arrive
at the recited range of claim 1. Ans. 12-13 (for example, "[ w ]hen a bursting
disk is included in the design of the reactor, the reactor would not have to be
designed at high pressure").
Appellants argue that the prior art reference does not recognize the
design pressure as a result-effective variable but do not address the
correlation between safety features and design pressure described in the
Specification. See App. Br. 17. Appellants also do not address the
Examiner's finding that Perry teaches optimizing various parameters
including reactor design pressure for safety reasons. See, e.g., App. Br. 12-
13. We are therefore unpersuaded that reversible error has been identified in
this aspect of the obviousness analysis.
Appellants next argue that a skilled artisan would not have combined
W alsdorff and Coudray because the nuclear reactor described in Coudray is
non-analogous art. App. Br. 13, 15. "Two criteria have evolved for
determining whether prior art is analogous: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved." In re Clay, 966 F.2d 656, 658-59 (Fed. Cir.
1992).
Appellants argue that Coudray is not in the same field of endeavor
because "the pressure built-up in the reactor is less of a concern in Coudray"
7
Appeal2018-000504
Application 13/255, 111
but do they not provide supporting factual evidence. App. Br. 13; Reply Br.
6. Given that Coudray undisputedly discusses controlling pressure built-up
in a reactor, no reversible error has been identified here.
Appellants also argue that Coudray solves a different problem. App.
Br. 15. More specifically, Appellants argue that the difficulty to detect
water in the process recited in claim 1 does not exist in the nuclear reaction
in Coudray. Id. Appellants, however, do not respond to the Examiner's
finding that tube rupture caused by overpressure during a reaction is a
known problem in the art. Compare Ans. 15 ( citing Perry), with e.g., Reply
Br. 5-16. 6 We are, therefore, unpersuaded that the Examiner reversibly
erred here.
Appellants next argue that the Examiner reversibly erred in rejecting
claim 1 because the prior art does not teach or suggest "the quick closing
time of the quick-closing valves." App. Br. 16. As the Examiner points out,
however, claim 1 does not recite any particular time parameter of the quick
closing valve. Ans. 16. Appellants' argument is not commensurate in scope
of the claim language at issue and cannot identify reversible error. See In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (holding that unclaimed
features cannot impart patentability to claims).
Appellants also argue that the Examiner reversibly erred in combining
the references because a pressure built-up in a reactor "would most likely
always lead to a shutdown of the process." App. Br. 17. Appellants thus
assert that a skilled artisan would not have arrived at the recited process by
6 We note that Appellants raise, for the first time in the Reply Brief, various
arguments as to the differences in the prior art. See Reply Br. 6-14. Based
on the analysis in footnote 4, we decline to consider these arguments.
8
Appeal2018-000504
Application 13/255, 111
balancing the respective costs associated with terminating and continuing the
reaction as reasoned by the Examiner. Id. Appellants, however, recognize a
pressure built-up in the reactor does not always result in terminating the
reaction. Id. The Specification further provides that safety measures for
pressure built-up may include a robust reactor or a bursting disk - neither of
which requires terminating the reaction. Spec. 2: 18-22 ( cited in App. Br.
11 ). As the Examiner points out, the recited process does not exclude a
rupture disk which may allow the reaction to continue notwithstanding a
pressure built-up. Final Act. 18. Appellants also recognize that Coudray
teaches continuing a reaction despite certain anomalies in the reactor
operation. App. Br. 13. We are therefore not persuaded that reversible error
has been identified in the Examiner's rationale that a skilled artisan would
have had reason to combine the references.
We further note that, when the combination of prior art elements the
Examiner combines to meet the requirements of a claim involves more than
just the simple substitution of one known element for another, a
determination of obviousness must weigh a number of factors to determine if
there is an apparent reason to combine. As the Supreme Court states:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.
KSR Int'!. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41 (2007). An
obviousness analysis may also take into account "[t]he normal desire of
artisans to improve upon what is already generally known." In re Ethicon,
9
Appeal2018-000504
Application 13/255, 111
Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017). In this case, the Examiner finds
that Perry teaches most equipment failures may lead to pressure built-up and
a skilled artisan would have a reason to monitor and control pressure built-
up as a result. Final Act. 20. Appellants do not address the Examiner's
finding with regard to Perry (App. Br. 12-18, Reply Br. 5-16), and no
reversible error has been identified in the Examiner's findings based on the
combined prior art teaching. See In re Gorman, 933 F.2d 982, 986 (Fed.
Cir. 1991) (holding that the test of obviousness is "whether the teachings of
the prior art, taken as a whole, would have made obvious the claimed
invention").
Appellants' assertion that Walsdorff was recognized as patentably
distinct from claim 1 during the PCT stage of the application on appeal
(App. Br. 13}-even if it were factually supported-is irrelevant to the
proceedings here and does not identify reversible error in the Examiner's
fact findings with regard to the obviousness rejection.
Lastly, Appellants argue that "the claimed process provides an
unexpected result." App. Br. 17; see also Reply Br. 16. This argument is
not supported by evidence showing that the difference (if any) between the
results obtained from the recited process and those of the closest prior art is
unexpected. As stated by the Examiner (Ans. 18), and not disputed by
Appellants (Reply Br. 14 ), the showing is not commensurate in scope with
claim 1, which does not exclude a scrubber, limit the size of the scrubber,
and does not exclude a bursting disk. We are therefore not persuaded that
the Examiner reversibly erred in finding a lack of unexpected results.
10
Appeal2018-000504
Application 13/255, 111
DECISION
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
11