Ex Parte SHAN

Patent Trial and Appeal Board

Oct 7, 2016

13771804 (P.T.A.B. Oct. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131771,804 02/20/2013
26290 7590 10/12/2016
PATTERSON & SHERIDAN, LLP,
24 Greenway Plaza, Suite 1600
Houston, TX 77046
FIRST NAMED INVENTOR
Zhiping SHAN
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.
D#81,705-Cl 3522
EXAMINER
HAILEY,PATRICIAL
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
10/12/2016 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):
PSDocketing@pattersonsheridan.com
pair_eofficeaction@pattersonsheridan.com
jcardenas@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHIPING SHAN
Appeal2015-004919
Application 13/771,804
Technology Center 1700
Before WESLEY B. DERRICK, BRIAND. RANGE, and LILAN REN,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-22. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellant, the real party in interest is HUNTSMAN
INTERNATIONAL LLC. Appeal Br. 2.
Appeal2015-004919
Application 13/771,804
STATEMENT OF THE CASE
Appellant describes the present invention as relating to a process for
preparing a catalyst containing vanadium phosphorus and oxygen (a "VPO
catalyst") and to a process of preparing maleic anhydride in the presence of
such a catalyst. Spec. iJ 1. Maleic anhydride is used as a raw material in
many products including synthetic resins. Id. at iJ 2. Appellant's
Specification states that catalyst performance is improved by contacting the
VPO catalyst with a fluid. Id. at iii! 12, 32-36, 56-67.
Claims 1 and 17, reproduced below with emphases added to certain
key recitations, are illustrative of the claimed subject matter:
1. A process for preparing a VPO catalyst comprising the
steps of:
(i) selecting an active VPO catalyst prepared
without using a pore builder comprising at least 90% by weight
(V0)2P207 based on the weight of the catalyst; and
(ii) contacting the active VPO catalyst with one or
more fluids comprising an organic solvent.
1 7. A process for preparing maleic anhydride
compnsmg
reacting a hydrocarbon having at least four carbons in a
straight chain with a molecular oxygen-containing gas in the
presence of a VPO catalyst prepared by a process
comprising the steps of:
(i) selecting an active VPO catalyst prepared without
using a pore builder comprising at least 90% by weight
(V0)2P207 based on the weight of the catalyst; and
(ii) contacting the active VPO catalyst with one or
more fluids comprising an organic solvent.
Appeal Br.2 9 and 11 (Claims Appendix).
2 In this decision, we refer to the Final Office Action mailed May 5, 2014
("Final Act."), the Appeal Brief filed October 6, 2014 ("Appeal Br."), the
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Application 13/771,804
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Forkner us 8,143,461 Mar. 27, 2012
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1-5 and 7-16 stand provisionally rejected as
unpatentable over claims 10-20 of co-pending Application No. 13/123,872
(issued on May 20, 2014, as U.S. Patent No. 8,728,972) based on
nonstatutory double patenting. Ans. 2.
Rejection 2. Claims 1-22 stand rejected under 35 U.S.C. § 103 as
unpatentable over Forkner. Id. at 3.
ANALYSIS
Rejection 1. The Examiner provisionally rejects claims 1-5 and 7-16
as being unpatentable over claims 10-20 of co-pending Application No.
13/123,872. Ans. 2; Final Act. 2. Application No. 13/123,872 issued as
U.S. Patent No. 8,728,972 on May 20, 2014, without any claim amendments
being entered after the Examiner's May 5, 2014, Final Action (i.e., the Final
Action for the application now on appeal).
Appellant did not address the Examiner's double patenting rejection
in the Appeal Brief. Pursuant to 41 C.F .R. § 41.41, we do not consider
Appellant's attempt to address the double patenting rejection for the first
time in reply. Reply Br. 2. Moreover, it appears that the Appellant's March
26, 2015, Terminal Disclaimer was disapproved on April 1, 2015.
Examiner's Answer mailed January 28, 2015 ("Ans."), and the Reply Brief
filed March 27, 2015 ("Reply Br.").
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Appeal2015-004919
Application 13/771,804
We thus sustain the Examiner's provisional rejection of claims 1-5
and 7-16 based on nonstatutory double patenting.
Rejection 2. The Examiner rejects claims 1-22 as obvious over
Forkner. Forkner teaches contacting an active VPO catalyst with an organic
solvent, but, as Appellant correctly argues, it teaches that the purpose of the
contacting is to remove pore builder when a pore builder is utilized. Appeal
Br. 4-6; Forkner 2: 16-21 ("activated catalyst may also be treated with a
solvent-removable pore building agent"); 8: 11-12 ("granules may then be
optionally mixed with a solvent-removable pore building agent"); 9:24--41
("the solvent-removable pore building agent may be removed from the
shaped body catalyst by applying the appropriate solvent").
As highlighted by Appellant's argument (Appeal Br. 4-6), the
Examiner errs by concluding that claim l's recitation of "selecting an active
VPO catalyst prepared without using a pore builder" is not part of the
claimed process (Ans. 7-8). Claim 1 is directed to a "process for preparing
a VPO catalyst" and the recitation "prepared without using a pore builder"
limits the claimed process. Thus, properly construed, claim 1 requires that
selection of a VPO catalyst that was prepared without using a pore builder
and requires that the same VPO catalyst that was prepared without a pore
builder be contacted "with one or more fluids comprising an organic
solvent." Claim 14 is limited in the same way. Claims 1 and 14 are not,
therefore, broad enough to ( 1) encompass Forkner' s process where a VPO
catalyst that was prepared with a pore builder is contacted by an organic
solvent or (2) encompass Forkner's process where a VPO that is not
prepared with a pore builder is not contacted by an organic solvent.
Claim 17 recites "[a] process for preparing maleic anhydride ... in the
presence of a VPO catalyst prepared by a process comprising .... "
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Appeal2015-004919
Application 13/771,804
Preparing maleic anhydride requires, in claim 17, also preparing the VPO
catalyst as recited. Thus, preparing an active VPO catalyst is part of the
claimed process, and claim 17 is limited by its recitations concerning the
active VPO catalyst preparation. The method of Claim 1 7 therefore requires
selecting an active VPO catalyst prepared without using a pore builder and
contacting that selected active VPO catalyst with one or more fluids
comprising an organic solvent. Under this construction, claim 1 7, just like
claims 1 and 14, is not broad enough to ( 1) encompass Forkner' s process
where a VPO catalyst that was prepared with a pore builder is contacted by
an organic solvent or (2) encompass Forkner's process where a VPO that is
not prepared with a pore builder is not contacted by an organic solvent.
The Examiner also finds that Forkner's claim 1 and claim 8 teach
contacting an active VPO catalyst prepared without a pore builder with a
solvent. Ans. 8. Considering Forkner as a whole, however, the teachings
from these claims do not suggest contacting an active VPO catalyst with an
organic solvent for any purpose other than removing pore builder. The
Examiner relies on Forkner's dependent claims reciting the inclusion of pore
builders and use of solvents to remove the included pore builder (Ans. 8)
where certain dependent claims recite, inter alia, organic solvents for use in
removing pore builder (claim 6). The Examiner, however, fails to proffer a
rationale for use of an organic solvent in the absence of a pore builder. The
Examiner has, accordingly, failed to adequately explain how one of ordinary
skill in the art at the time of the invention would have been led by Forkner to
use an organic solvent in the absence of a pore builder. See, e.g., Belden Inc.
v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) ("obviousness
concerns whether a skilled artisan not only could have made but would have
been motivated to make the combinations or modifications of prior art to
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Application 13/771,804
arrive at the claimed invention."). The Examiner has thus failed to set forth
a sufficient basis for us to sustain the rejection. In re Warner, 379 F.2d
1011, 1017 (CCP A 1967) ("The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not ... resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.").
Because the present record does not adequately support the
Examiner's conclusion that claims 1, 14, and 17 or their dependent claims
are obvious over Forkner, we do not sustain the Examiner's Forkner-based
rejection of claims 1-22.
DECISION
For the above reasons, we affirm the Examiner's provisional rejection
of claims 1-5 and 7-16 based on non-statutory double-patenting. We
reverse the Examiner's rejection of claims 1-22 as obvious over Forkner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED-IN-PART
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