Ex Parte Pawlak et al

Board of Patent Appeals and Interferences

Mar 29, 2012

11432692 (B.P.A.I. Mar. 29, 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.
11/432,692 05/11/2006 Nathan A. Pawlak GAST 0102 PUS1 9319
22045 7590 03/29/2012
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
BOYER, RANDY
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
03/29/2012 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 NATHAN A. PAWLAK,
VLADIMIR IVANOVICH VEDENEEV, and
ROBERT W. CARR
____________

Appeal 2011-010265
Application 11/432,692
Technology Center 1700
____________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-3 and 5-39. We have jurisdiction under 35 U.S.C. § 6.

STATEMENT OF THE CASE
Claims 1 and 8 are representative of the subject matter on appeal and
are set forth below:

Appeal 2011-010265
Application 11/432,692

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1. An apparatus for producing methanol, comprising:

a reactor having first and second methane-containing gas inputs and
an oxygen-containing gas input, said reactor configured to facilitate a multi-
stage partial oxidation reaction of heated methane-containing gas by oxygen
from an oxygen-containing gas;

a first methane-containing gas supply coupled to the first methane-
containing gas input;

an oxygen-containing gas supply coupled to the oxygen-containing
gas input;

a second methane-containing gas supply coupled to the second
methane-containing gas input to provide a methane-containing gas to be
directly mixed with a mixture of the methane-containing gas and the
oxygen-containing gas within the reactor at a later stage of the reaction,
wherein said later stage is at a location in said reactor where formation of
methanol and formaldehyde is substantially completed; and

a condenser in communication with the reactor, the condenser
operating at isobaric conditions to reduce product temperature.

8. An apparatus for producing methanol, comprising:

a reactor configured to support a reaction of partial oxidation of a first
heated hydrocarbon-containing gas with oxygen of an oxygen-containing
gas;

a first methane-containing gas supply for supplying into the reactor a
heated methane-containing gas;

an oxygen-containing gas supply for supplying into the reactor an
oxygen containing gas;

a second methane-containing gas supply, downstream of the first
heated hydrocarbon-containing gas supply, for supplying into the reactor a
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cold methane-containing gas having a temperature of less than the heated
methane-containing gas, said cold methane-containing gas being directly
mixed with a mixture of the methane-containing gas and reaction product
containing gas within the reactor to produce a product stream comprising
formaldehyde and methanol;

a heat exchanger configured to transfer heat from the product stream
to the heated methane containing gas; and

a condenser in communication with the reactor, the condenser
operating at isobaric conditions to reduce product temperature.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brockhaus et al. (Brockhaus) 4,243,613 Jan. 6, 1981
Steinberg et al. (Steinberg) 5,427,762 Jun. 27, 1995
Vedeneev et al. (Vedeneev) RU 2203261 C1 Mar. 15, 2002

THE REJECTIONS
1. Claims 1-3, 5-16, and 21-36 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Vedeneev1 in view of Steinberg.
2. Claims 8, 17-20, 28, and 37-39 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Vedeneev in view of Steinberg and
further in view of Brockhaus.

1 We use the English translation of Vedeneev cited by the Examiner as
discussed in footnote 1 on page 4 of the Answer, which was provided with
the IDS filed on August 17, 2006.
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Application 11/432,692

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ANALYSIS

As an initial matter, Appellants have not presented separate arguments
for all of the rejected claims. Rather, Appellants’ arguments are principally
directed to independent claims 1, 8, 21, and 28. Any claim not separately
argued will stand or fall with its respective independent claim. See 37
C.F.R. § 41.37(c)(1)(vii).
We essentially adopt the Examiner’s findings and position as set forth
in the Answer. We add the following for emphasis.

Rejection 1
Claims 1 and 21
Claim 1 is directed to an apparatus that includes “a second methane-
containing gas supply coupled to the second methane-containing gas input to
provide a methane-containing gas to be directly mixed with a mixture of the
methane-containing gas and the oxygen-containing gas within the reactor at
a later stage of the reaction, wherein said later stage is at a location in said
reactor where formation of methanol and formaldehyde is substantially
completed” [emphasis added]. Claim 21 has similar recitations. This
location within the reactor “at a later stage of the reaction” is depicted in
Appellants’ Figure 1B entering at location 110. Figure 1B is reproduced
below:
App
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/432,692
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. 5.

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Application 11/432,692

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Appellants argue that the hydrocarbon gases described by Vedeneev
fail to meet the limitations of independent claims 1, 8, 21, and 28 which
require that the mixing of the second methane-containing gas occurs in “the
reactor at a later stage of the reaction” (Rejection 1: claims 1 and 21) or
downstream of the first methane containing gas (Rejection 2: claims 8 and
28). Br. 6.
It is the Examiner’s position that the cold hydrocarbon gas that enters
reaction zone 2 (at entry point 4) satisfies the claim limitation of at a “later
stage of reaction” (Rejection 1: claims 1 and 21) or “downstream” of the
first methane containing gas (Rejection 2: claims 8 and 28). Ans. 18.
With regard to claims 1 and 21, it is clear from Appellants’ Figure 1B,
supra, that the entry point for the supply gas in the manner as claimed is at
location 110. As stated above, it is the Examiner’s position that location 4
of Figure 1 of Vedeneev satisfies this aspect of claims 1 and 21. However,
we agree with Appellants that this location is not at a location within the
reactor “at a later stage of the reaction” as required by claims 1 and 21. That
is, the reaction is necessarily occurring in zone 2 of the reactor in Vedeneev,
in contrast with the location at 110 of Appellants’ Figure 1B. We thus agree
with Appellants’ explanation made on page 1 of the Reply Brief that the
Examiner’s interpretation of Vedeneev (as set forth on pages 19-20 of the
Answer) is not supported by the teachings of Vedeneev.
Hence, we reverse Rejection 1.

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Rejection 2 (claims 8 and 28)
With regard to claim 8, this claim is directed to an apparatus that
includes “a second methane-containing gas supply, downstream of the first
heated hydrocarbon-containing gas supply, for supplying into the reactor a
cold methane-containing gas having a temperature of less than the heated
methane-containing gas, said cold methane-containing gas being directly
mixed with a mixture of the methane-containing gas and reaction product
containing gas within the reactor to produce a product stream comprising
formaldehyde and methanol” [emphasis added]. Claim 28 has similar
recitations.
We agree with the Examiner that the gas input at location 4 shown in
Vedeneev’s Figure 1, supra, satisfies a location “downstream” of the first
heated hydrocarbon-containing gas supply that enters reaction zone 2 at the
left-hand side of zone 2 (see Vedeneev’s Figure 1 ). That is, Vendeneev’s
Figure 1 shows that location 4 is downstream from the location at which the
hot hydrocarbon gas 1 enters at the left-hand side of zone 2. Ans. 7-8.
Appellants also argue the aspect of the claims of supplying into the
reactor “a cold methane-containing gas having a temperature less than the
heated methane-containing gas” is not met by Vedeneev, for the reasons set
forth by Appellants on page 8 of the Brief. However, this aspect of the
claims is a process limitation, and claim 8 (and claim 28) is directed to an
apparatus. Claims directed to an apparatus must be distinguished from the
prior art in terms of structure. See In re Danly, 263 F.2d 844, 848 (CCPA
1959) (“Claims drawn to an apparatus must distinguish from the prior art in
terms of structure rather than function”); In re Gardiner, 171 F.2d 313,
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315-16 (CCPA 1948) (“It is trite to state that the patentability of apparatus
claims must be shown in the structure claimed and not merely upon a use,
function, or result thereof.”); In re Sinex, 309 F.2d 488, 492 (CCPA 1962).
Hence, such arguments are not convincing.
Finally, with regard to the claimed limitation of a condenser operating
at isobaric conditions, we agree with the Examiner’s response made on page
21 of the Answer that such a limitation is functional whereas the claims are
directed to an apparatus. As stated supra, claims directed to an apparatus
must be distinguished from the prior art in terms of structure. Id.
We, therefore, affirm Rejection 2.
CONCLUSIONS OF LAW AND DECISION
Rejection 1 is reversed.
Rejection 2 is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART

Appeal No. 2011-010255
Application 11/432,692

NAGUMO, Administrative Patent Judge, concurring.
Although I join the decision of the majority, I write separately to
respond directly to Appellants’ argument that the Examiner’s rejection of
claim 8 must be reversed because “[t]he above passage from Vedeneev
make[s] it impossible to conclude that the ‘second’ hydrocarbon gas (of
Vedeneev) is at a lower temperature.” (Br. 8.) On the contrary, Vedeneev
makes it impossible to conclude that the second hydrocarbon gas is
introduced to reaction zone 2 through device 4 at the same temperature as
the first (hot) hydrocarbon gas.
In support of their argument, Appellants quote two passages from
Venedeev. The first teaches that “[i]n the reaction zone the constant
temperature is kept by means of consecutive input of the part of the initial
mixture after the heat-exchanger ‘gas-gas’ 10 through the input devices.”
(Examiner’s Exhibit A (Vedeneev translation) 8, ll. 52-56; record
translation 7, ll. 13-15; quoted at Br. 7, after the 1st full para.)
The second passage reads,
[i]n the reaction zone 2 the temperature within the range of
450°C is constantly being kept due to the consecutive input
of the part of the hydrocarbon gas after its heating in the heat
-exchanger ‘gas-gas’ up to a corresponding temperature by
means of a throttle valve for temperature regulation fitted on
the input line of a cold gas.
(Examiner’s Exhibit A 9, ll. 5-13; record translation 7, ll. 39-43; quoted at
Br. 8; emphasis added.)
Appellants appear to believe that the “corresponding temperature “ is the
temperature of the hot hydrocarbon gas.

1
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Appellants, however, appear to have overlooked Vedeneev’s
disclosure that the “gas-gas” heat exchanger 10 (shown in Figure 2) heats
“cold dry natural gas . . . up to 100°C.” (Exhibit A 8, ll. 82-88; record
translation 7, ll. 31-34.) Thus, the “corresponding temperature” is the
temperature of the cooling hydrocarbon gas fed through gas-gas heat
exchanger 10. As fully illustrated in Vedeneev Figure 2, and partially
illustrated in Figure 1, this gas is the “cold hydrocarbon gas” that is
subsequently used to cool the tubular part 3 of reactor 1, as well as the gas
that is used to cool reaction zone 2. Clearly, this “cold gas,” although heated
to 100°C, is cooler than the hot hydrocarbon gas, which has a temperature
of 430-470°C (Exhibit A 8, ll. 44-48; record translation 7, ll. 8-10), when it
is introduced to reaction zone 2.
Thus, Appellants have failed to show harmful error in the Examiner’s
rejection, even if the claimed apparatus were considered to read on,
potentially, the entire plant illustrated in Vedeneev Figure 2.

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