Ex Parte REMPEL et al

Patent Trial and Appeal Board

Aug 31, 2016

12506528 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/506,528 07/21/2009
34947 7590 09/02/2016
LANXESS CORPORATION
111 RIDC PARK WEST DRIVE
PITTSBURGH, PA 15275-1112
FIRST NAMED INVENTOR
GARRY REMPEL
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.
P004 01229 4243
EXAMINER
BOYLE, ROBERT C
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
ipmail@lanxess.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARRY REMPEL, QINMIN PAN, and
CHANDRA MOULI MADHURANTHAKAM
Appeal2015-001540
Application 12/506,528
Technology Center 1700
Before MARK NAGUMO, JEFFREY R. SNAY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 1, 4, and 7-38. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
The subject matter on appeal relates to a process for the continuous
hydrogenation of carbon-carbon double bonds in an unsaturated polymer.
1 Appellants identify the real party in interest as Lanxess Inc. Appeal Brief
filed June 30, 2014 ("Br."), 3.
2 Final Office Action mailed December 16, 2013 ("Final Act.").
Appeal2015-001540
Application 12/506,528
Spec. 1, 11. 7-8. Claim 1, reproduced below, is illustrative of the claims on
appeal.
1. A process for the continuous hydrogenation of carbon-carbon
double bonds in a nitrile rubber to produce a hydrogenated
nitrile rubber, in the presence of a solvent and a catalyst, the
method comprising
passing the nitrile rubber, catalyst, and hydrogen through
a reactor equipped with static internal elements,;
heating the reactor to a temperature of 100° C to 260° C;
and
providing a pressure in the reactor to 0.1 MPa to 50 MPa,
wherein the static internal elements of the reactor have an open
blade geometry and an aspect ratio of between 0.5 to 3.
Br. 33 (Claims Appendix) (line breaks and indentation added for
readability).
REJECTIONS
The following rejections are before us for review:
1. Claims 1, 4, 7-10, 12-14, 17, 19, 36, and 37 are rejected under
35 U.S.C. § 103(a) as unpatentable over Pan3 in view of Kenics4
alone or further in view of either Kumar5 or Song6;
3 Pan et al., Numerical Investigation of Continuous Processes for Catalytic
Hydrogenation of Nitrile Butadiene Rubber, 42 Polymer Engineering and
Science 899-910 (2002) (hereinafter "Pan").
4 Kenics, Advanced Static Mixing Technology KMX Mixer, Chemineer, Inc.
(2001) (hereinafter "Kenics").
5 Kumar et al., Performance of Kenics static mixer over a wide range of
Reynolds number, 139 Chemical Engineering J. 284--295 (2007) (hereinafter
"Kumar").
6 Song et al., A general correlation for pressure drop in a Kenics static
mixer, 60 Chemical Engineering Science 5696-5704 (2005) (hereinafter
"Song").
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2. Claims 1, 4, 7-11, 18-23, 25-28, 30-35, and 38 are rejected under
35 U.S.C. § 103(a) as unpatentable over Miyamoto7 in view of Pan
and Kenics alone or further in view of either Kumar or Song;
3. Claims 4, 7-9, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pan in view of Kenics and Parent 19988 alone or
further in view of either Kumar or Song;
4. Claims 12-14, 17, 36 and 37 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Miyamoto in view of Pan, Kenics, and
Parent 19969 alone or further in view of either Kumar or Song;
5. Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Miyamoto in view of Pan, Kenics, and
Parent 1998 alone or further in view of either Kumar or Song;
6. Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Miyamoto in view of Pan, Kenics, and Ashe10 alone or further in
view of either Kumar or Song; and
7. Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Miyamoto in view of Pan, Kenics, and Brothman 11 alone, or
further in view of either Kumar or Song.
7 Miyamoto et al., US 2002/0107423 Al, published Aug. 8, 2002
(hereinafter "Miyamoto").
8 Parent et al., OsHCl(C0)(02)(PCy3)2-Catalyzed Hydrogenation of
Acrylonitrile-Butadiene Copolymers, 37 Ind. Eng. Chem. Res. 4253--4261
(1998) (hereinafter "Parent 1998").
9 Parent et al., RhCl(PPh3)3 and RhH(PPh3)4 Catalyzed Hydrogenation of
Acrylonitrile-Butadiene Copolymers, 35 Ind. Eng. Chem. Res. 4417--4423
(1996) (hereinafter "Parent 1996").
10 Ashe et al., US 2005/0002831 Al, published Jan. 6, 2005 (hereinafter
"Ashe").
11 Brothman, US 2,212,261, issued Aug. 20, 1940 (hereinafter "Brothman").
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Application 12/506,528
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence
supports the Examiner's conclusions that the subject matter of Appellants'
claims is unpatentable over the applied prior art. Accordingly, we sustain
the Examiner's rejections for reasons set forth below and by the Examiner in
the Answer. See generally Examiner's Answer mailed September 4, 2014
("Ans.), 2--46.
Because Appellants' arguments primarily focus on claim 1, we select
independent claim 1 as the representative claim on which we focus in
deciding this appeal. Appellants' additional arguments regarding the
dependent claims argued in Appellants' Brief under separate subheadings
are essentially cumulative, and thus, we only address the additional
arguments that are substantive below.
Request to Withdraw the Finality of Office Action
Appellants request that the Board withdraw the finality of the Office
Action because it contains numerous cumulative rejections, which
purportedly is improper, and reopen prosecution on the merits. See Br. 11.
We do not have jurisdiction to withdraw the finality of the Final Action and
order prosecution to reopen, as this issue does not relate to matters involving
the rejection of claims on appeal. This issue is not an appealable matter, but
rather is a petitionable matter under 37 C.F.R. § 1.181. See Manual of Patent
Examination Procedure 1002; see also In re Hengehold, 440 F.2d 1395,
1403---04 (CCP A 1971) ("[T]he kind of adverse decisions of examiners
which are reviewable by the board must be those which relate, at least
indirectly, to matters involving the rejection of claims.").
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Rejections 1
The Examiner finds, and Appellants do not dispute, that Pan teaches
the continuous process of catalytic hydrogenation of nitrile butadiene rubber
to produce a hydrogenated nitrile butadiene rubber (Pan Abstract, 899),
where the process includes passing the nitrile rubber, catalyst, and hydrogen
through a reactor equipped with static internal elements (id. at 900 (Fig. 1 ),
902 (Fig. 2)), heating the reactor to a temperature of 418.2 K (145.05 QC),
and providing a pressure in the reactor of2.37 MPa (id. at 901 (Table 1)).
Compare Ans. 2 with Br. 12-17. The Examiner acknowledges that Pan does
not teach the reactor having an open blade geometry with an aspect ratio of
between 0.5 and 3. Ans. 2.
The Examiner finds that Kenics describes a Kenics® KMX Static
Mixer from Chemineer, Inc., which is a static mixer with open blade
geometry. Kenics 1-2. The Examiner finds, and Appellants do not dispute,
that Appellants' Specification teaches that the Kenics® KMX Mixer
inherently has an aspect ratio (length to diameter ratio of the static internal
element) of from 0.5 to 3 (Ans. 37; see also Non-Final Office Action mailed
August 8, 2013 ("Non-Final Act."), 2-3). Spec. 13:32-14:2. The Examiner
also relies on Kumar and Song as further evidence that the Kenics® KMX
Static Mixer inherently has an aspect ratio within the claimed range.
Ans. 39--40; see also Kumar Abstract (stating three different Kenics Mixers
have an aspect ratio of 1.5) and Song 5697 (Table 1) (indicating three
different Kenics Mixers have aspect ratios of 1.74, 1.67, and 1.80). Further,
the Examiner finds that Kenics teaches using cross-stream mixing and flow
splitting to achieve rapid blending and it enhances the performance of a
mixer in tough high viscosity ratio applications (Kenics 2). Ans. 38.
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Because Pan's process uses a solution with diene polymers (e.g.,
acrylonitrile butadiene (NBR), which are highly viscous (Spec. 4: 1-2), and
desires instantaneous mixing of the catalyst with the other reactants, nitrile
rubber and hydrogen, (Pan 906 (right column), the Examiner determines that
it would have been obvious to substitute the Kenics® KMX Static Mixer for
Pan's plug flow reactor to provide rapid blending and achieve enhanced
mixing performance. Ans. 38, 39.
Appellants argue that the Examiner failed to provide a proper
motivation for substituting the Kenics® KMX Mixer for Pan's plug flow
reactor. Br. 12. This argument is not persuasive. "Express suggestion to
substitute one equivalent for another need not be present to render such
substitution obvious." In re Fout, 675 F.2d 297, 301(CCPA1982).
Nevertheless, the Examiner has shown that the prior art provides a
motivation for substituting the Kenics® KMX Mixer for Pan's plug flow
reactor-rapid blending and enhanced mixing performance. Ans. 38.
Appellants do not explain why the Examiner's reasoning is erroneous or
why the use of the Kenics® KMX Mixer in place of Pan's plug flow reactor
would have been anything more than the simple substitution of one known
static mixer for another to obtain predictable results, i.e., rapid mixing.
Appellants argue that Pan teaches slow mixing the components using
a plug flow reactor to provide efficient hydrogenation whereas the Kenics®
KMX Mixer provides very rapid blending, and would cause hydrogen to
pool in bubbles and be less available for reacting in the static mixer,
providing worse hydrogenation efficiency than Pan's plug flow reactor.
Br. 13-14. Thus, Appellants contend that substituting the Kenics® KMX
Mixer for Pan's plug flow reactor would change the principle operation of
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Pan's method. Id. This argument is not persuasive. Pan does not teach
slow mixing components using a plug flow reactor. Rather, Pan teaches a
plug flow reactor with an instantaneous well-mixing component in the inlet
zone is preferred to mix the catalyst into the other reactants. Pan Abstract,
910 (left column); see also Non-Final Act. 3. Thus, substituting the Kenics®
KMX Mixer, which provides rapid mixing, for Pan's plug flor reactor would
provide the instantaneous mixing desired by Pan. In addition, Applicants'
argument that the Kenics® KMX Mixer would cause hydrogen to pool in
bubbles and be less available for reacting in the static mixer is unsupported
attorney argument.
Appellants argue that Kumar and Song teach away from substituting
the Kenics® KMX Mixer for Pan's plug flow reactor because the references
teach that there is a pressure drop created by the turbulent flow of Kenics'
static mixer which would (i) make it difficult to maintain the pressure
required by claim 1, and (ii) cause hydrogen to be drawn away from the
reaction mixture thereby reducing the efficiency of the reaction. Br. 15-17.
This argument is not persuasive because Kumar does not criticize, discredit,
or otherwise discourage the use of Kenics' static mixer. Further, Appellants'
contentions (i) and (ii) are unsupported attorney arguments and such
arguments are unpersuasive of error.
Rejections 2
The Examiner finds, and Appellants do not dispute, that Miyamoto
teaches a continuous hydrogenation of unsaturated carbon groups
(Miyamoto Abstract, i-f 14) using copolymers ofbutadiene and styrene
(id. at i-fi-158-59) in a tube reactor with a static mixing element (id. at i-f 96).
Ans. 7. The Examiner acknowledges that Miyamoto does not teach using
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nitrile rubber or a static reactor with an open blade geometry and an aspect
ratio of between 0.5 and 3. Id.
The Examiner finds that Pan teaches a continuous process for catalytic
hydrogenation of nitrile butadiene rubber, and Kenics teaches a Kenics®
KMX Static Mixer from Chemineer, Inc., which is a static mixer with open
blade geometry (Kenics 1-2) having an aspect ratio of between 0.5 and 3, as
evidenced by Appellants' Specification (Spec. 13:32-14:2). Ans. 5, 7. The
Examiner determines, and Appellants do not dispute, that it would have been
obvious to substitute Pan's nitrile rubber polymers for Miyamoto's polymers
because Pan teaches catalytic hydrogenation can be used interchangeably on
a variety of unsaturated polymers, such as styrene and butadiene block
copolymers and acrylonitrile-butadiene rubber copolymers, to yield stronger
and more stable derivatives (Pan 899). Compare Ans. 7 with Br. 21-23.
The Examiner also determines that it would have been obvious to substitute
Kenics' static mixer for Miyamoto's tube reactor with a static mixing
element to provide rapid blending and enhanced mixing performance
provided by Kenics' mixer (Kenics 2). Ans. 7-8.
Appellants argue that Miyamoto' s paragraph 96 teaches "!!. static
mixer element" and that it is "not necessary to employ a reactor with a
stirrer," and thus Miyamoto, coupled with the teachings of Kumar and Song,
as discussed above, would have led one of ordinary skill in the art away
from substituting Miyamoto's static mixer with the Kenics® KMX Static
Mixer. Br. 21. This argument is not persuasive. As discussed above,
Kumar and Song do not teach away from using the Kenics® KMX Static
Mixer. In addition, Appellants misrepresent Miyamoto' s disclosure at
paragraph 96 to support its contentions. Miyamoto' s paragraph 96 states
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that "[a]lthough it is not necessary to employ a reactor equipped with a
stirrer, the hydrogenation reaction is preferably conducted with stirring to
promptly contact the supplied hydrogen with a polymer ... , and a reactor
equipped with a stirrer having high stirring ability is preferably used."
(emphasis added). Thus, contrary to Appellants' assertion, Miyamoto would
have led one of ordinary skill in the art to, rather than away from, using
reactor with rapid stirring.
Rejections 3
Claims 4, 7-9, 15, and 16 depend directly (claims 4 and 7) or
indirect! y (claims 8, 9, 15, and 16) from claim 1.
Appellants argue the claims as a group subject to the rejections over
Pan in view of Kenics and Parent 1998 alone or further in view of either
Kumar or Song. See Br. 18-20. We select claim 7 as representative of the
rejected claims, and the remaining claims (8, 9, 15 and 16) will stand or fall
with claim 7. i 2
Claim 7 requires the catalyst is either a homogenous catalyst or a
heterogenous catalyst. The catalyst can be an organo-metallic catalyst such
as an osmium-containing catalyst. See claims 8 and 15.
12 The Examiner's inclusion of claim 4 in this rejection appears to be an
oversight, but in any event the error is harmless. Claim 4 requires a range of
temperatures and pressures for the reactor equipped with static internal
elements. The Examiner also included claim 4 in the rejection under 35
U.S.C. § 103(a) over Pan and Kenics alone or further in view of either
Kumar or Song and over Miyamoto in view of Pan and Kenics alone or
further in view of either Kumar or Song. See Ans. 2-19. As discussed
above with regard to those rejections, Pan teaches the temperature of the
reactor with static internal elements (e.g. plug flow reactor) is 145.05 QC at a
pressure of 2.37 MPa. Pan 901 (Table 1).
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In rejecting claim 7, the Examiner relies on the same findings
discussed above regarding Pan and Kenics. Although Pan teaches using
osmium catalysts generally (Pan 899), the Examiner acknowledges that Pan
does not teach the specific osmium-containing catalyst having the specific
formula recited in claim 15 and encompassed by claim 7. Ans. 20. The
Examiner finds, and Appellants do not dispute, that Parent teaches the
specific osmium catalyst required by claim 15. Compare Ans. 20 with
Br. 18-20.
The Examiner determines that it would have been obvious to one of
ordinary skill in the art to use Parent 1998's osmium catalyst in Pan's
hydrogenation process because it is remarkably efficient and more active at
industrial conditions than the current generation of Rh, Ru, and Pd systems
(Parent 1998, 4253). Appellants do not explain why the Examiner's
reasoning is erroneous. Rather, Appellants argue that there is no motivation
to substitute Kenics' static mixer for Pan's plug flow reactor, and Kenics'
static mixer would change the principle operation of Pan's plug flow reactor.
Those arguments are not persuasive of error in the Examiner's rejection for
the reasons discussed above.
In addition, Appellants argue that Parent 1998's Figure 1 (400 rpm
compared to 1000 rpm) teaches that "increasing agitation reduces the
incorporation of hydrogen into the reaction mixture," which is further
evidence that would teach away from substituting Kenics' static mixer for
Pan's plug flow reactor. Br. 18, 19. This argument is not persuasive. As
the Examiner points out, the tests in Figure 1 were done at 800, 1000, 1200,
and 1400 rpm. Ans. 42. Thus, the reference to "400 rpm" in the description
under Figure 1 appears to be a typographical error and "400 rpm" should
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read "1400 rpm." Id. In contrast to Appellants' contention, Parent 1998
shows increased agitation did not reduce hydrogen adsorption into the nitrile
rubber solution hydrogen. Parent 1998, 4255 (Figure 1 ).
Rejections 4
Claims 12-14, 17, 36, and 37 depend directly (claim 17) or indirectly
(claims 12-14, 36, and 37) from claim 1.
Appellants argue the claims as a group subject to the rejections over
Miyamoto in view of Pan, Kenics, and Parent 1996 alone or further in view
of either Kumar or Song. See Br. 23-26. We select claim 12 as
representative of the rejected claims, and the remaining claims (13, 14, 17,
36, and 37) will stand or fall with claim 12.
Claim 12 requires the organo-metallic catalyst is a rhodium- or
ruthenium-containing complex catalyst of a specific formula.
The Examiner finds, and Appellants do not dispute, that Pan teaches
tris( triphenylphosphine )rhodium(!) chloride organometallic catalysts
(Pan 901 (Scheme 1) ). Compare Ans. 6 with Br. 23-26; see also
Appellants' claim 36 (reciting the organo-metallic catalyst can be
tri( triphenylphosphine )rhodium(!) chloride).
Appellants instead repeat their argument that there is no motivation
for substituting (i.e., Miyamoto teaches away from substituting) Kenics'
static mixer for Miyamoto's tube reactor. Br. 23-24. This argument is not
persuasive for the reasons discussed above. Appellants also argue that using
Kenics' static mixer in place of Miyamoto' s tube reactor would change the
principle operation of Miyamoto's process. Id. at 24. This argument is
unsupported attorney argument, and thus is also unpersuasive of error.
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In addition, Appellants argue Parent 1996 teaches a "hydrogenation
apparatus" and not a static mixer, and therefore fails to provide motivation
for substituting Kenics' mixer for Miyamoto's tube reactor. Br. 24. This
argument is not persuasive because Appellants are not addressing the facts
and reasoning set forth by the Examiner in the rejections. The Examiner
does not rely on Parent 1996 for a motivation to substitute Kenics' mixer for
Miyamoto's mixer. Rather, the Examiner relies on Parent 1996 as evidence
that the claimed rhodium catalysts, e.g., tris(triphenylphosphine)rhodium (I)
chloride, were known in the art as catalysts for hydrogenation of nitrile
rubber. Ans. 44. 13 See In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("one
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references.").
Rejections 5-7
Appellants rely on the same arguments raised in connection with
claims 1 and 12 to identify reversible error in the Examiner's remaining
§103(a) rejections based on Miyamoto, Pan, and Kenics in addition to either
Parent 1998, Ashe, or Brothman alone or further in view of either Kumar or
Song. See Br. 27-31. Accordingly, based on the reasons set forth above,
and the Answer, we determine that the preponderance of evidence supports
13 Parent 1996 discusses rhodium catalysts, not osmium catalysts. Thus, it
appears that the Examiner's statement on page 44 of the Answer includes a
typographical error and should state that Parent 1996 is relied on to teach
rhodium catalysts for hydrogenation of nitrile rubber were known in the art.
See Ans. 24, 25; see also Ans. 37 (where the Examiner indicates that it
would be improper to use Parent 1996 to reject claims 15 and 16 as it would
not teach the osmium-containing catalysts recited in those claims).
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the Examiner's conclusion that the subject matter recited in claims 15, 16,
24, and 29 are unpatentable over the applied prior art.
DECISION
For the above reasons, the Examiner's rejections of claims 1, 4, and
7-38 are 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).
AFFIRMED
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