11090752 (B.P.A.I. May. 16, 2012)

Ex Parte Romero et al

Board of Patent Appeals and InterferencesMay 16, 2012

11090752 (B.P.A.I. May. 16, 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. 11/090,752 03/24/2005 Yilda Romero 04-407 4993 34704 7590 05/16/2012 BACHMAN & LAPOINTE, P.C. 900 CHAPEL STREET SUITE 1201 NEW HAVEN, CT 06510 EXAMINER SMITH, JENNIFER A ART UNIT PAPER NUMBER 1731 MAIL DATE DELIVERY MODE 05/16/2012 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 YILDA ROMERO, JORGE TEJADA, JOSE DE LA CRUZ, and ROSA CALDERA ____________ Appeal 2010-012418 Application 11/090,752 Technology Center 1700 ____________ Before CHARLES F. WARREN, BEVERLY A. FRANKLIN and GRACE KARAFFA OBERMANN, Administrative Patent Judges. OBERMANN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims 1-13 and 16- 18 directed to a catalyst for hydrodesulfurization of olefinic naphtha. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-012418 Application 11/090,752 2 THE INVENTION Claim 1 is illustrative of the subject matter on appeal: 1. A catalyst for hydrodesulfurization of olefinic naphtha, comprising: a porous support; and a catalytic phase on the support comprising a Group VI element, a Group VIII element and at least one element from Groups I and II of the periodic table of elements (CAS version); wherein the catalyst is present in species having reducibility characterized by at least two distinct signals, as measured by Temperature Programmed Reduction (TPR), one of which is less than or equal to about 1000K and another of which is greater than about 1000K. THE PRIOR ART The Examiner relies upon the following references in the rejections (Ans. 3):1 Sudhaker US 5,846,406 Dec. 8, 1998 Pereira US 4,791,090 Dec. 13, 1988 Didillon US 2003/0168380 A1 Sept. 11, 2003 Domokos US 7,557,062 B2 Jul. 7, 2009 Bearden US 4,295,995 Oct. 20, 1981 THE REJECTIONS Claims 1-13 and 16-18 are pending in the application. Claims 14-15 are withdrawn. App. Br. 4. The Appellants seek review of the following rejections advanced on appeal by the Examiner: 2 1 Our analysis makes reference to the Examiner’s Answer mailed June 14, 2010 (“Ans.”) and the Appeal Brief filed May 4, 2010 (“App. Br.”). Appeal 2010-012418 Application 11/090,752 3 1. Claims 1-9 and 17 stand rejected under 35 U.S.C. § 103(a) as obvious over Sudhaker. 2. Claims 10-13 and 18 stand rejected under § 103(a) as obvious over Sudhaker in view of Pereira. 3. Claim 13 stands rejected under § 103(a) as obvious over Sudhaker in view of Didillon. 4. Claim 16 stands rejected under § 103(a) as obvious over Sudhaker in view of Domokos or Bearden.3 ANALYSIS Claims 1 and 10 are the only independent claims at issue. Both claims are directed to a catalyst having reducibility characterized by a Temperature Programmed Reduction (TPR) profile. The Examiner finds that Sudhaker describes a catalyst having the specified reducibility. Ans. 4-5, 12-15. Specifically, the Examiner finds that, although Sudhaker “makes no mention of the TPR profile,” the catalyst of Sudhaker “appears to be substantially identical to” the claimed catalyst with respect to the materials specified in claim 1, and thus, the specified TPR profile “would necessarily follow the catalyst structure disclosed” in Sudhaker. Ans. 4-5, 13-14. The sustainability of each of the four rejections at issue depends upon the correctness of that finding. See fn. 2. 2 Appellants request review of, but do not argue, a fifth rejection which was withdrawn by the Examiner in a non-final Office Action mailed April 3, 2009. App. Br. 9, 17. 3 The Appellants misidentify the claim at issue in the fourth rejection as claim 13. App. Br. 9; see Ans. 11. Appeal 2010-012418 Application 11/090,752 4 The Appellants contend that the catalyst of Sudhaker is not substantially identical to the claimed catalyst and, therefore, would not necessarily exhibit the specified TPR profile. App. Br. 11-12; see In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (to establish inherency, the missing limitation must be “necessarily present in the thing described in the reference”) (quotation omitted). Specifically, the Appellants argue that Sudhaker fails to disclose the “unique calcination steps” required to produce “the unique TPR signals” that characterize the reducibility of the claimed catalyst. App. Br. 11. The Examiner relies upon Comparative Example II of Sudhaker, which describes a one-step calcination process of heating the required materials to 2000C for 65 hours to produce the final catalyst. Ans. 5, 14; Sudhaker col. 12 ll. 43-57. The Appellants, by contrast, describe a three- step calcination process of heating the materials to 248oF (or 1200C) for two hours, followed by heating to 464oF (or 240oC) for two hours, followed by heating to 842oF (or 450oC) for four hours. App. Br. 11; Spec. ¶ 0041. We are of the opinion the Examiner has not carried the burden of establishing that the claimed catalysts reasonably appear to be substantially identical to the catalysts taught by Sudhaker. See, e.g., In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977). We agree with the Appellants that the Examiner has not established that the disclosure in Comparative Example II of Sudhaker, which describes a one-step calcination process at 200oC, is sufficient to establish that the process taught by Sudhaker necessarily produces a catalyst that is substantially identical to the claimed catalyst, which undergoes a three-step calcination process that tiers to a much higher temperature of 450oC. Significantly, the Examiner relies upon Comparative Appeal 2010-012418 Application 11/090,752 5 Example II of Sudhaker, as well as the “[d]rying and calcining steps [] taught in Column 9, lines 11-35,” but does not rely upon the three-step calcination process of heating up to 6500C that is disclosed at Column 9, lines 44-67 of Sudhaker. Ans. 14-15. On this record, we agree with the Appellants that the Examiner fails as a matter of fact to make out a prima facie case of obviousness of claims 1- 13 and 16-18. The rejections, therefore, cannot be sustained. REVERSED sld