Hermanus Jongkind et al.

Patent Trials and Appeals Board

Jul 6, 2020

2019002294 (P.T.A.B. Jul. 6, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/428,496 03/16/2015 Hermanus Jongkind TS2895-US-PCT 5168
23632 7590 07/06/2020
SHELL OIL COMPANY
P O BOX 576
HOUSTON, TX 77001-0576
EXAMINER
CALL, DOUGLAS BRYANT
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
07/06/2020 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):
Shelldocketing@cpaglobal.com
USPatents@Shell.com
shellusdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HERMANUS JONGKIND, WIEBE SJOERD KIJLSTRA,
BART PELGRIM, MARCELLO STEFANO RIGUTTO, and
FERRY WINTER1
____________

Appeal 2019-002294
Application 14/428,496
Technology Center 1700
____________

Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
BRIAN D. RANGE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–5, 7–9, 11, and 13–15. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Shell
Oil Company. Appeal Br. 2.
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Application 14/428,496

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BACKGROUND
The subject matter on appeal relates to processes for preparing
hydrocracking catalysts. E.g., Spec. 1:2–5; Claim 1. Claim 1 is reproduced
below from page 12 (Claims Appendix) of the Appeal Brief:
1. A process for the preparation of a hydrocracking catalyst, which
comprises the steps of:
(a) mixing a zeolite Y, having a unit cell size in the range of
from 24.42 to 24.52 Å, a bulk silica to alumina molar ratio
(SAR) in the range of from 10 to 15, and a surface area of
from 910 to 1020 m2/g, with an alumina binder component,
a first Group VIB metal component, and a first Group VIII
metal component, which at least one of the metal
components is contained in at least one first metal-
containing acidic aqueous solution, to thereby provide a
mixture, wherein the zeolite Y is present in the mixture in
an amount of 40 wt.% or greater, based on the total weight
of the zeolite Y and the alumina binder component;
(b) extruding the mixture to provide an extruded mixture;
(c) drying the extruded mixture to provide a dried and extruded
mixture;
(d) calcining the dried and extruded mixture to provide a
calcined product;
(e) impregnating the calcined product with a second Group VIB
metal component and a second Group VIII metal
component, which at least one of the metal components is
contained in at least one second metal-containing solution
to provide an impregnated product; and
(f) calcining the impregnated product at a temperature in the
range of from 350°C to 850°C.
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REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1–5, 7–9, 11, and 13–15 under 35 U.S.C. § 103(a) as
unpatentable over Domokos (WO 2011/067258 A1, published June 9,
2011),2 and Kagami (US 2007/0135300 A1, published June 14, 2007).3
2. Claims 1, 7, 8, 13, and 14 for nonstatutory double patenting over
claims 1, 5, and 6 of U.S. Appl. No. 14/366,712 in view of Domokos.4

2 The Examiner’s citations to Domokos are to the corresponding U.S.
publication (US 2012/0279901 A1, published Nov. 8, 2012) rather than to
the WO publication. See Ans. 4. The Appellant does not object to the
Examiner’s reliance on the U.S. publication. See generally Appeal Br. For
consistency, our citations in this decision are also to the U.S. publication.
3 In the “Response to Arguments” section of the Final Action, the Examiner
relies on an additional reference named Iyer (US 5,686,375, issued Nov. 11,
1997). See Final Act. 17. To the extent the Examiner deems that reference
necessary to the rejection, the Examiner should have listed it in the statement
of the rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970)
(“Where a reference is relied on to support a rejection . . . there would
appear to be no excuse for not positively including the reference in the
statement of the rejection.”). In any event, Iyer appears to be redundant of
Kagami in that the Examiner relies on it as disclosing sequential
impregnation of metals from different groups. Final Act. 17; Iyer cols. 3–4
(disclosing application of Group VIII metal followed by application of
Group VIB metal). Accordingly, it would not appear to remedy the error
identified below even were we to consider it.
4 In the Final Action and Answer, this rejection is stated as being
provisional. E.g., Ans. 14. However, U.S. Appl. No. 14/366,712 issued as
U.S. Patent No. 10,226,766 B2 on March 12, 2019. Accordingly, the double
patenting rejection is no longer provisional. Additionally, we observe that,
although the claims of the ’712 application were amended from the time of
the Examiner’s double patenting rejection to the time of issuance of the
’766 patent, we discern no amendments that might have altered the
substance of the double patenting rejection, and the Appellant has not
identified any.
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ANALYSIS
Rejection 1
Of particular relevance to the issues on appeal, claim 1 requires that a
Group VIB metal and a Group VIII metal are added to a mixture including
zeolite Y during a mixing step (step (a)), followed, inter alia, by a calcining
step (step (d)), followed by an impregnating step in which additional
Group VIB metal and Group VIII metal are added to the calcined product
(step (e)), followed by an additional calcining step (step (f)).
The Examiner finds that Domokos teaches a process involving a
zeolite Y that falls within the scope of claim 1 and that Domokos teaches
addition of Group VIB/VIII metal components either during a mixing step
or during an impregnating step after calcination, but that “Domokos does not
explicitly disclose that the catalytically active components can be added at
both times.” Ans. 5. The Examiner determines, however, that “it would
have been obvious to one of ordinary skill in the art . . . that it is permissible
[to add the metals at both times] as Domokos discloses adding at any time
and does not preclude adding the catalytic[] metals at both the co-mulling
[mixing] stage and to the extruded and formed catalyst.” Id. at 5–6.
For reasons consistent with the Appellant’s arguments, see, e.g.,
Appeal Br. 5–6, 8, 10, we are not persuaded by the Examiner’s analysis. See
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.”). The Examiner’s
determination that Domokos “does not preclude” adding metals at both an
initial mixing step and after an initial calcination step does not identify a
reason that a person of ordinary skill in the art would have been motivated to
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add a Group VIB metal and a Group VIII metal at both steps. Cf. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (establishing a prima facie
case of obviousness typically requires identifying “an apparent reason to
combine the known elements in the fashion claimed.”). That it “could have”
been done, e.g., that it is not precluded by the reference, is not adequate to
establish obviousness. See Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064,
1073 (Fed. Cir. 2015) (“[O]bviousness 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 arrive at the claimed
invention.” (emphases in original)).
The Examiner also cites Kagami ¶ 68 as teaching that metal solutions
“may be applied sequentially” to impregnate different metals on a carrier.
Ans. 7. Kagami ¶ 68, however, says nothing about calcining steps in
between sequential impregnation steps. Although other paragraphs of
Kagami do disclose an embodiment in which a Group 4 metal is
impregnated and calcined, followed by impregnation and calcination of
Group 6 and 8–10 metals, e.g., Kagami ¶¶ 82, 86, 98, 100, 106, the
Examiner identifies no disclosure in Kagami of adding and calcining metal,
followed by adding and calcining additional metal from the same group, in
two sequential steps, as recited by claim 1. Kagami discloses that it is
“preferabl[e]” to “soak[] by co-impregnation with one solution containing all
the compounds.” Id. ¶ 68. Additionally, we observe that the Examiner does
not persuasively explain why the relied-on disclosures of Kagami would
have provided a reason to modify Domokos as the Examiner proposes. See
Ans. 7 (finding that “the first portion of the metals of Domokos could be
incorporated [in the mixture] and the second portion could be impregnated
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into the extruded and formed pellets sequentially” (emphasis added)).
Merely demonstrating “that each . . . element[] was, independently, known
in the prior art” is not sufficient, see KSR, 550 U.S. at 418; nor is
determining that a proposed modification “could be” made, Ans. 7; see
Belden, 805 F.3d at 1073.
As discussed above, the record reflects that it was known to add
metals from different groups in a single step (e.g., Domokos ¶ 44, suggesting
the use of a Group VIB metal and a Group VIII metal), and that it was
known to add metals from one group in a first step, followed by adding
metals from a different group in a second step (e.g., Kagami ¶¶ 56, 68,
disclosing impregnating with a Group 4 metal, and “then further
impregnating” with a solution containing metals from Groups 6 and 8–10).
But the Examiner does not provide adequate findings or rationale to explain
why a person of ordinary skill in the art, in view of the prior art of record,
would have had reason to add metals from one or more groups in a first step,
and then add metals from the same groups in a second step. In that regard,
we also observe that the Appellant’s disclosure suggests that the first and
second metals may be the same metals, in which case the same metals would
be added in both steps. E.g., Spec. at 21:15–22:19 (disclosing a “first metals
solution” comprising nickel and tungsten, and a “second metals solution”
comprising nickel and tungsten); cf. In re Omeprazole Patent Litig., 536
F.3d 1361, 1381 (Fed. Cir. 2008) (affirming district court’s determination
that patent challenger had not persuasively shown why a person of ordinary
skill in the art would have been motivated to add a “subcoating” to a
composition that already possessed a “coating,” even though coatings and
subcoatings were each known in the art).
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On the record before us, we are not persuaded that the Examiner has
adequately established that a person of ordinary skill in the art would have
had reason to modify the process of Domokos as the Examiner proposes.
Accordingly, we reverse the Examiner’s rejection of claim 1.
The Examiner’s analysis of the remaining claims subject to
Rejection 1 does not remedy the error identified above. Accordingly, we
likewise reverse the Examiner’s rejection of those claims.
Rejection 2
As to the double patenting rejection, the Appellant argues that claim
amendments (i.e., the incorporation of “[t]he subject matter of dependent
claims 10 and 12 . . . into independent claim 1,” Ans. 10) “should render this
rejection moot.” Appeal Br. 10.
The relied-upon claim amendments were made on September 5, 2017.
See Claims dated Sept. 5, 2017. The obviousness-type double patenting
rejection at issue here was made in the Final Action, dated December 6,
2017. It is evident from the Final Action that the double patenting rejection
was updated after the September 5, 2017 claim amendments to address the
amended claims. See Final Act. 14–16, 18 (“The double patenting rejection
has been modified as a result of Applicant’s amendments and has been
maintained.”). In the Answer, the Examiner specifically states that “the
provisional double patenting rejection is maintained because claim 9 was not
also incorporated into claim 1.” Ans. 22. In the Reply Brief, the Appellant
does not contest the Examiner’s reasoning or otherwise assert any
substantive error in the Examiner’s rejection.
On this record, the Appellant has not identified reversible error in the
Examiner’s double patenting rejection. See In re Jung, 637 F.3d 1356, 1365
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(Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections . . . .”).
We summarily affirm the rejection.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–9,
11, 13–15 103(a) Domokos, Kagami
1–5, 7–9,
11, 13–15
1, 7, 8, 13,
14
Nonstatutory
Double Patenting
1, 7, 8, 13,
14
Overall
Outcome
1, 7, 8, 13,
14
2–5, 9, 11,
15
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 IN PART