Ex Parte Olivier-Bourbigou et al

Patent Trial and Appeal Board

Oct 30, 2017

13716590 (P.T.A.B. Oct. 30, 2017)

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.
13/716,590 12/17/2012 Helene OLIVIER-BOURBIGOU PET-2816 8398
23599 7590 11/01/2017
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
PEREZ, JELITZA M
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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 HELENE OLIVIER-BOURBIGOU,
FRANCOIS HUGUES, LIONEL MAGNA, and
PIERRE-ALAIN BREUIL
(Applicant: IFP ENERGIES NOUVELLES)
Appeal 2017-004185
Application 13/716,59c1
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1 and 4—19.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 The Applicant (hereinafter “Appellant”) states that the real party in interest
is “IFP Energies nouvelles.” Appeal Brief filed on August 9, 2016,
hereinafter “Appeal Br.,” 1.
2 Appeal Br. 2—14; Reply Brief filed on January 11, 2017, hereinafter “Reply
Br.,” 1—3; Final Office Action (notice e-mailed on February 23, 2016),
hereinafter “Final Act.,” 2—17; Examiner’s Answer (notice e-mailed on
November 18, 2016), hereinafter “Ans.,” 2—32.
Appeal 2017-004185
Application 13/716,590
BACKGROUND
The subject matter on appeal relates to “a process for the production
of octenes from ethylene by dimerizing ethylene to butenes and by
dimerizing butenes to octenes.” Specification, hereinafter “Spec.,” 1:4—5.
The inventors state their process advantageously avoids purification, such as
to remove isobutene between ethylene dimerization and butene dimerization,
in contrast to processes that use fluid catalytic cracking C4 cuts or steam
naptha cracking cuts. Id. 4:1—6. Representative claim 1 is reproduced from
page 15 of the Appeal Brief (Claims Appendix), as follows:
1. A process for the production of octenes starting from
ethylene, comprising:
a) dimerizing ethylene to butenes in the presence of a
catalyst;
a’) separating a butenes-containing effluent from
unreacted ethylene after the dimerization (a) and recycling
unreacted ethylene to (a),
b) dimerizing the butenes in the butenes-containing
effluent to octenes in the presence of a catalyst.
REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections under 35 U.S.C.
§ 103(a), which are as follows (Ans. 3—18; Final Act. 2—17):
I. claims 1, 4, 8, and 18 as being unpatentable over
Buchanan et al. (hereafter “Buchanan”)3 in view of Sato
et al. (hereafter “Sato”);4
II. claim 5 as being unpatentable over Buchanan in view of
Sato and further in view of Le Quan et al. (hereafter “Le
3 US 2007/0185358 Al, published Aug. 9, 2007.
4 US 5,633,418, issued May 27, 1997.
2
Appeal 2017-004185
Application 13/716,590
Quan”);5
III. claims 6, 7, and 19 as being unpatentable over Buchanan
in view of Sato and further in view of Zuech;6
IV. claim 9 and 17 as being unpatentable over Buchanan in
view of Sato and further in view of Commereuc et al.
(hereafter “Commereuc ’703”);7
V. claims 10 and 11 as being unpatentable over Buchanan in
view of Sato and further in view of Commereuc et al.
(hereafter “Commereuc ’173”);8
VI. claim 12 as being unpatentable over Buchanan in view of
Sato and further in view of Schultz et al. (hereafter
“Schultz”);9
VII. claim 13 as being unpatentable over Buchanan in view of
Sato and further in view of Chauvin et al. (hereafter
“Chauvin”);10
VIII. claim 14 as being unpatentable over Buchanan in view of
Sato and further in view of Sundaram et al. (hereafter
“Sundaram”);* 11 and
IX. claims 15 and 16 as being unpatentable over Buchanan in
5 US 4,532,370, issued on July 30, 1985.
6 US 3,485,881, issued on Dec. 23, 1969.
7 US 7,235,703 B2, issued on June 26, 2007.
8 US 6,646,173 B2, issued on Nov. 11, 2003.
9 US 6,846,965 Bl, issued on Jan. 25, 2005.
10 FR 2 608 594 Al, published on June 24, 1988.
11 10 Kirk-Othmer Encyclopedia of Chemical Technology 593—632 (2001).
3
Appeal 2017-004185
Application 13/716,590
view of Sato and further in view of Vermeiren.12
DISCUSSION
Rejection I
Claims 1, 4, 8, and 18 are rejected as being unpatentable over
Buchanan in view of Sato. Because the Appellant argues these claims
together, Appeal Br. 3—10, we select claim 1 as representative of the issues
on appeal for this rejection. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds Buchanan discloses a process that includes
feeding ethylene and a catalyst to a dimerization reactor to produce an
effluent stream including unreacted ethylene, the catalyst, and a comonomer
(i.e., butene), separating the unreacted ethylene from the butene, and storing
the comonomer for subsequent processing. Ans. 3^4.
The Examiner finds Buchanan does not disclose dimerizing butene to
produce octene, as recited in claim 1. Id. at 4. The Examiner finds Sato
discloses a method in which an olefin, such as butene, is dimerized in the
presence of a catalyst. Id. The Examiner concludes it would have been
obvious to further dimerize the butene of Buchanan to produce octene in
view of Sato’s disclosure that octenes “are very valuable intermediate
products for the production of plasticizers.” Id. at 5.
The Appellant contends Buchanan and Sato do not disclose or suggest
consecutive dimerizations in which ethylene is dimerized to yield butene and
the butene is dimerized to yield octene. Appeal Br. 4, 6. Specifically, the
Appellant argues Buchanan discloses its comonomer (i.e., butene) is stored
for use in a subsequent process, such as polyethylene polymerization, but
12 US 2011/0288256 Al, published on Nov. 24, 2011.
4
Appeal 2017-004185
Application 13/716,590
does not disclose or suggest further dimerizing the butene. Appeal Br. 4—5,
8. The Appellant asserts Buchanan’s disclosure that the stored comonomer
can be used for “a variety of applications” (Buchanan 145) does not specify
what the applications could be and thus does not suggest further
dimerization. Appeal Br. 5.
The Appellant further argues the Examiner’s rationale of modifying
Buchanan in view of Sato to produce octene so plasticizers may be produced
is insufficient because the goal of producing octenes does not direct one to
select a particular process to produce the octene, such as by starting with the
butene from Buchanan’s process. Appeal Br. 6. Moreover, the Appellant
contends Sato does not disclose or suggest using butene dimerized from
ethylene. Id. The Appellant also asserts that Sato teaches using butene from
thermal or catalytic cracking of hydrocarbon oils and thus directs one of
ordinary skill in the art away from using the butene from Buchanan’s
process. Appeal Br. 6; Reply Br. 1—2. In view of the above, the Appellant
contends the Examiner has engaged in impermissible hindsight in the
rejection of claim 1. Appeal Br. 5, 7.
The Appellant’s arguments are not persuasive. The disclosures of
Buchanan and Sato support the Examiner’s findings in the rejection of claim
1. In particular, Buchanan discloses preparing olefin comonomers from
ethylene by feeding ethylene monomer and a catalyst to a reactor; producing
an effluent stream including unreacted ethylene monomer, the catalyst, and
the comonomer; and separating the unreacted ethylene from the comonomer.
Buchanan 112. Buchanan discloses the comonomer can be butene and the
comonomer “may be used as the comonomer input of a polyolefin
polymerization process, and a variety of other applications.” Id. H 12, 45.
5
Appeal 2017-004185
Application 13/716,590
Therefore, the disclosure of Buchanan supports the Examiner’s findings
regarding Buchanan.
Sato discloses the catalytic dimerization of olefins, such as ethylene,
propylene, butene, pentene, decene, or tetradecene. Sato 1:5—7. Sato
discloses that butene is a preferred olefin as a starting material. Id. 2:63—67.
Sato further discloses that the olefin produced by dimerization can be
converted to an alcohol by hydroformylation and hydrogenation, which can
be further esterified for use as a plasticizer. Id. 2:58—62. Thus, the
disclosure of Sato supports the Examiner’s findings as well.
Collectively, the disclosures of Buchanan and Sato support the
Examiner’s conclusion that a person having ordinary skill in the art would
have found it obvious to modify Buchanan in view of Sato. Although
Buchanan does not disclose dimerization of its butene, Buchanan discloses
the butene may be used for “a variety of other applications.” Buchanan 145.
This suggests that the butene of Buchanan can be processed further, as in,
e.g., Sato.
Sato discloses dimerizing olefins with a catalyst and states that butene
is a preferred starting material. Sato 1:5—7, 2:63—67. Thus, Sato directs one
of ordinary skill in the art to use butene as a starting material, such as butene
produced by other processes. Indeed, Sato discloses that butene is the
preferred starting material when the olefin is converted to an alcohol and
esterified for use as a plasticizer. Id. 2:58—67. Therefore, Sato would have
suggested modifying the process of Buchanan so the butene of Buchanan is
further dimerized. As a result, the combined teachings of Buchanan and
Sato would have suggested the process of claim 1. That is, the disclosure of
Sato provides a reason to dimerize the butene of Buchanan, such that the
6
Appeal 2017-004185
Application 13/716,590
dimerized butene may be converted to an alcohol and esterified for use as a
plasticizer, as stated by the Examiner in the rejection of claim 1. Ans. 5.
KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“[I]n many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle”). In this regard, “the test for combining
references is not what the individual references themselves suggest but
rather what the combination of disclosures taken as a whole would suggest
to one of ordinary skill in the art.” In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971).
In view of the above, we conclude the Examiner has articulated a
rationale with rational underpinnings to explain why it would have been
obvious to modify the process of Buchanan in view of Sato. KSR, 550 U.S.
at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
As noted above, the Appellant does not argue claims 4, 8, and 18
separately from claim 1. Appeal Br. 3—10. For the reasons stated above and
those discussed in the Examiner’s Answer, we uphold the Examiner’s
§ 103(a) rejection of claims 1, 4, 8, and 18.
Rejections II—IX
For the rejections of claims 5—7, 9—17, and 19, the Appellant relies on
the arguments submitted for claim 1 and essentially argues the additionally
applied references do not remedy the deficiencies of Buchanan and Sato in
the rejection of claim 1. Appeal Br. 10—14. For the reasons set forth above,
there are no deficiencies in the rejection of claim 1 that require curing by Fe
Quan, Zuech, Commereuc ’703, Commereuc ’173, Schulz, Chauvin,
Sundaram, or Vermeiren. Thus, for the reasons set forth above and those
7
Appeal 2017-004185
Application 13/716,590
discussed in the Examiner’s Answer, we uphold the Examiner’s § 103(a)
rejections of claims 5—7, 9—17, and 19.
SUMMARY
Rejections I—IX are affirmed. Therefore, the Examiner’s final
decision to reject claims 1 and 4—19 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)(l)(iv).
AFFIRMED
8