Ex Parte Stites et al

Patent Trial and Appeal Board

Jun 18, 2018

14240338 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/240,338 02/21/2014 Ronald C. Stites
7982 7590 06/20/2018
ALBEMARLE CORPORATION
PA TENT DEPARTMENT
451 FLORIDA STREET
BATON ROUGE, LA 70801
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.
RF-1106 US 1037
EXAMINER
BARTA, MEDHANIT W
ART UNIT PAPER NUMBER
1671
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
Albemarle.IPDocket@albemarle.com
Tina.Matz@Albemarle.com
Maggie.Martin@Albemarle.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD C. STITES,
SHAKEEL H. TIRMIZI, and KARL KHARAS
Appeal2017-008808
Application 14/240,33 81
Technology Center 1600
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and DAVID
COTTA, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1-8 and 10-23
(Br. 3).2 Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
Appellants' disclosure "relates to the field of processes for the
chemical conversion of synthesis gas to alcohols, such as ethanol, using
1 Appellants identify "Albemarle Corporation" as the real party in interest
(Br. 1).
2 Pending claim 24 stands withdrawn from consideration (Br. 3).
Appeal2017-008808
Application 14/240,338
sulfide metal catalysts" (Spec. ,r 1 ). Claims 1, 16, and 23 are representative
and reproduced below:
1. A method of producing ethanol from syngas, said method
compnsmg:
(a) feeding syngas to an alcohol-synthesis reactor that
contains a sulfided metal catalyst, under suitable conditions for
converting said syngas into an intermediate stream comprising
methanol, ethanol, and one or more sulfur-containing
compounds;
(b) sending at least part of said intermediate stream to a
separation unit, whereby at least a portion of said methanol is
separated from said ethanol to form a methanol recycle stream
and an ethanol product stream, and wherein at least a portion of
said sulfur-containing compounds are contained in said
methanol recycle stream;
( c) recycling some or all of said methanol recycle stream
back to said alcohol synthesis reactor to add sulfur to, or reduce
sulfur loss from, said sulfided metal catalyst, wherein said
methanol recycle stream has a sulfur-atom concentration of at
least 10 ppm S; and
( d) optionally introducing one or more additional sulfur
compounds, into said alcohol synthesis reactor and/or into said
methanol recycle stream, to add sulfur to, or reduce sulfur loss
from, said sulfided metal catalyst.
(Br. A-1 ( emphasis added).)
16. A method of producing ethanol from syngas, said method
compnsmg:
(a) feeding syngas to an alcohol-synthesis reactor that
contains a sulfided metal catalyst, under suitable conditions for
converting said syngas into an intermediate stream comprising
methanol and ethanol;
(b) co-feeding hydrogen sulfide with said syngas to said
alcohol-synthesis reactor, to add sulfur to, or reduce sulfur loss
from, said sulfided metal catalyst;
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Appeal2017-008808
Application 14/240,338
( c) sending at least part of said intermediate stream to a
separation unit, whereby at least a portion of said methanol is
separated from said ethanol to form a methanol recycle stream
and an ethanol product stream; and
( d) recycling some or all of said methanol recycle stream
back to said alcohol synthesis reactor, wherein said methanol
recycle stream has a sulfur-atom concentration of at least 10
ppmS,
wherein said hydrogen sulfide is fed in step (b) at a
concentration between about 50 ppm H2S and about 400 ppm
H2S.
(Br. A-3 (emphasis added).)
23. A method of producing ethanol from syngas, said method
compnsmg:
(a) feeding syngas to an alcohol-synthesis reactor that
contains a sulfided metal catalyst, under suitable conditions for
converting said syngas into an intermediate stream comprising
methanol and ethanol;
(b) co-feeding hydrogen sulfide with said syngas to said
alcohol-synthesis reactor, to add sulfur to, or reduce sulfur loss
from, said sulfided metal catalyst;
( c) sending at least part of said intermediate stream to a
separation unit, whereby at least a portion of said methanol is
separated from said ethanol to form a methanol recycle stream
and an ethanol product stream; and
( d) recycling some or all of said methanol recycle stream
back to said alcohol synthesis reactor, wherein said methanol
recycle stream has a sulfur-atom concentration of at least 10
ppmS,
wherein said hydrogen sulfide is fed in step (b) at a
concentration optimized for the specific extent of said recycling
some or all of said methanol recycle stream back to said
alcohol-synthesis reactor.
(Br. A-4 (emphasis added).)
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Appeal2017-008808
Application 14/240,338
The claims stand rejected as follows:
Claims 1-8, 10-15, and 23 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Tirtowidjojo3 and Kharas. 4
Claims 16-23 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Lucas5 and Kharas.
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
Based on the combination of Tirtowidjojo and Kharas, Examiner
concludes that, at the time Appellants' invention was made, it would have
been prima facie obvious to, inter alia, "use the methods of Kharas in
determining the amount of sulfur required in the recycle stream of
Tirtowidjojo to promote the catalyst activity and thereby reduc[ e] sulfur loss
from the catalyst" (Final Act. 6 8). Similarly, Examiner concludes that, based
on the combination of Lucas and Kharas, at the time Appellants' invention
was made, it would have been prima facie obvious, "to determine the
amount of sulfur required in the recycle stream [ as taught by Kharas] to
activate the sulfide catalyst of Lucas and thereby reduc[ e] sulfur loss from
the catalyst" (Final Act. 14). We are not persuaded.
As Appellants explain, Examiner acknowledges that neither
Tirtowidjojo nor Lucas "disclose, teach or suggest" a "methanol recycle
stream [that] has a sulfur-atom concentration of at least 10 ppm S" (Br. 8
3 Tirtowidjojo et al., US 2010/0069515 Al, published Mar. 18, 2010.
4 Kharas, US 2010/0210741 Al, published Aug. 19, 2010.
5 Lucas et al., US 2011/0201701 Al, published Aug. 18, 2011.
6 Office Action mailed March 22, 2016.
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Appeal2017-008808
Application 14/240,338
and 9; see also Final Act. 6 and 11 ). Examiner relies on Kharas to make up
for this deficiency in Tirtowidjojo and Lucas (see Final Act. 6-8 and 11-13).
Specifically, Examiner finds that "Kharas teaches ... [a] sulfide catalyst
[that] include[s] elemental sulfur in an amount of at least about 100 ppm
([0055])" (Final Act. 6 (alteration original)). As Appellants explain,
however, Kharas, as relied upon by Examiner, fails to disclose what is
missing in either of Tirtowidjojo or Lucas or "what is presently claimed" by
Appellants (Br. 8 and 9). To the contrary, as Appellants explain, paragraph
55 of Kharas refers "to the amount of elemental sulfur within [Kharas']
catalyst itself ... not ... the amount of sulfur within a recycle stream of an
alcohol synthesis reaction" and "[ t ]his amount [ of sulfur within the catalyst
itself] does not appear to indicate how to determine an appropriate amount
of sulfur to include in the recycle stream" (id. at 8 and 9-10). We agree.
In this regard, we recognize Examiner's assertion that Kharas
discloses the recovery of "sulfur downstream of the reactor and recycling at
least a portion of th[ at] sulfur into the reactor" (Final Act. 6 ( citing Kharas
,r 23); id. at 12 (citing Kharas ,r 23); see also id. at 9 and 14). Examiner,
however, as Appellants make clear, fails to adequately explain how Kharas'
disclosure of an amount of sulfur within a catalyst and the recycling of
downstream sulfur back into a reactor leads a person of ordinary skill in this
art to Appellants' claimed invention which expressly requires, inter alia, a
"methanol recycle stream [that] has a sulfur-atom concentration of at least
10 ppm S" (see Br. A-1, A-3, and A-4; see also Br. 8-9 and 10).
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
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Appeal2017-008808
Application 14/240,338
The rejection of claims 1-8, 10-15, and 23 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Tirtowidjojo and Kharas is
reversed.
The rejection of claims 16-23 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lucas and Kharas is reversed.
REVERSED
6