Omer Refa. Koseoglu et al.

Patent Trials and Appeals Board

Aug 7, 2020

14987141 - (D) (P.T.A.B. Aug. 7, 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.
14/987,141 01/04/2016 Omer Refa KOSEOGLU 214,271 (SA3054) 5288
38137 7590 08/07/2020
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
LI, JUN
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
08/07/2020 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OMER REFA KOSEOGLU,
YAMING JIN, ZINFER ISMAGILOV,
SVETLANA YASHNIK, ANTON SALNIKOV,
MIKHAIL KERZHENTSEV, and VALENTIN PARMON
____________

Appeal 2019-002720
Application 14/987,141
Technology Center 1700
____________
Before JEFFREY B. ROBERTSON, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 10–23 of Application 14/987,141. Final
Act. (July 24, 2018). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Boreskov Institute of Catalysis and
Saudi Arabian Oil Co. as the real parties in interest. Appeal Br. 2.
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Application 14/987,141
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I. BACKGROUND
The ’141 Application describes a catalyst useful for the gas phase
oxidation of sulfur-containing hydrocarbons. Spec. ¶ 1. In particular, the
Specification describes Cu/Zn/Al catalysts which are promoted with at least
one oxide of a group VIB metal such as molybdenum or tungsten. Id.
Claim 10 is representative of the ’141 Application’s claims and is
reproduced below from the Claims Appendix to the Appeal Brief.
10. A catalyst composition useful in oxidative
desulfurization of a sulfur containing hydrocarbon, comprising:
copper oxide in an amount ranging from 10 weight
percent to 50 wt.%, zinc oxide in an amount ranging from
5 wt.% to less than 20 wt.%, aluminum oxide in an amount
ranging from 20 wt.% to 70 wt.%, and at least one Group VIB
metal oxide promoter, in an amount up to 20 wt.% of said
catalytic composition.
Appeal Br. 15.
II. REJECTION
On appeal, the Examiner maintains2 the following rejection: Claims
10–23 are rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Bourane3 in view of Wessel.4 Final Act. 2.

2 The Examiner has withdrawn a provisional obviousness-type double
patenting rejection and a non-provisional obviousness-type double patenting
rejection. Answer 6.
3 US 2014/0197074 A1, published July 17, 2014.
4 US 2006/0035784 A1, published February 16, 2006.
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III. DISCUSSION
A. The rejection of independent claim 10
The Examiner found that Bourane describes a Cu/Zn/Al catalyst for
desulfurization of hydrocarbons comprised of weight percentages of copper
oxide, zinc oxide, and aluminum oxide that overlap with the corresponding
ranges recited in claim 10. Final Act. 2 (citing Bourane ¶ 59). The Examiner
found that Bourane does not expressly teach the use of at least one group
VIB metal oxide in an amount of up to 20% of the catalytic composition. Id.
The Examiner further found that Wessel describes a catalyst for
removing sulfur from a hydrocarbon stream comprising from 5 to 70% by
weight of copper, silver, zinc, molybdenum, iron, cobalt, nickel, or mixtures
thereof. Id. at 3 (citing Wessel ¶ ¶ 19–21). The Examiner found that Wessel
describes using copper and molybdenum together and that molybdenum
oxide can be used preferably in amounts between 3 and 50% by weight. Id.
The Examiner also found that it would have been obvious to a person
of ordinary skill in the art at the time of the invention to modify Bourane’s
catalyst by incorporating the amount of molybdenum described by Wessel.
Id. According to the Examiner, such a combination of elements known to be
effective in oxidative removal of sulfur from a hydrocarbon stream amounts
to the use of elements having known functions to achieve a predictable
results. Id. The Examiner further found that Bourane and Wessel describe
catalyst that function under substantially the same operating conditions. In
particular, the Examiner asserts, without citation, that Bourane describes
conducting desulfurization at temperatures as low as 180°C,5 “which is close

5 In the Examiner’s Answer, the Examiner admits that this statement is
erroneous. Answer 9.
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Application 14/987,141
4
enough or substantially the same as that of operating conditions as disclosed
by Wessel.” Final Act. 8.
B. Appellant’s arguments
Appellant presents argues for reversal of the rejection of claims 10,
11, and 14–34 as a group and presents separate arguments for reversal of the
rejections of each of claims 12 and 13. Appeal Br. 5. Because we reverse the
rejection of independent claim 10, we need not address Appellant’s
arguments regarding claims 12 and 13.
Appellant agrees that Bourane describes the base Cu/Zn/Al catalyst
recited in claim 10. Appeal Br. 5.Appellant, however, argues that the
Examiner erred by combining Bourane and Wessel because Bourane and
Wessel describe catalysts that operate in different ways at different operating
temperatures such that one cannot routinely substitute portions of one
catalyst for portions of the other. Id. at 8. In particular, Appellant argues that
Bourane’s catalyst has a preferred operating temperature of 300°C to 600°C.
Id. at 7 (citing Bourane ¶ 66). Appellant admits that Bourane describes
operating at a temperature as low as 200°C. Id. Wessel, on the other hand,
describes its catalyst as operating at temperatures between −50°C and
150°C. Id. (citing Wessel Abstract). Wessel describes its preferred operating
temperature as between 15°C and 40°C, with room temperature being most
preferred. Id. (citing Wessel ¶ 16).
The Examiner responds that Appellant has not explained why the
difference in the stated operating temperatures for the catalyst described in
Bourane and Wessel is significant. Answer 9. According to the Examiner,
Bourane and Wessel describe substantially the same catalyst compositions
and that these compositions perform substantially the same function. Id.
Finally, the Examiner asserts that Wessel’s disclosure that its catalyst can be
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Application 14/987,141
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used at temperatures between −50°C and 150°C does not limit Wessel’s
catalyst composition to use at those temperatures, nor does it indicate that
the composition cannot be used at the temperatures described in Bourane. Id.
Thus, according to the Examiner, it would have been obvious to a person of
ordinary skill in the art to modify Bourane in view of Wessel because the
references are drawn to the same technical fields (catalysis), constituted with
the same ingredients (copper oxide, zinc oxide, and aluminum oxide) and
share common utilities (removing sulfur from hydrocarbon streams). Id. at 8.
We reverse because the Examiner is improperly placing the burden of
proof on Appellant. Catalysis is an unpredictable field. Inventors have an
incentive to describe as broad a useful range for their inventions as possible.
In view of the facts, the Examiner cannot simply ignore a 50°C difference in
the operating temperature ranges for the Wessel and Bourane catalysts by
claiming that the operative ranges are “close enough.” Although Appellant’s
argument would have been stronger if they had been able to identify a
concrete chemical difference between catalyst function in the different
temperature ranges—e.g., a mechanistic difference—we cannot countenance
the Examiner’s unsupported statements as a way to elide significant
differences between the disclosures in the prior art. In sum, the Examiner
has not provided an adequate reason to combine Bourane and Wessel in the
manner proposed in the rejection of claim 10. The Examiner, therefore, has
not established a prima facie case of obviousness of claim 10.
In view of the foregoing, we reverse the rejection of independent
claim 10. Thus, we also reverse the rejection of claims 11–23, which depend
from claim 10.
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IV. CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
10–23 103 Bourane, Wessel 10–23
Overall
Outcome 10–23
REVERSED