Ex Parte Butler et al

Patent Trial and Appeal Board

Nov 26, 2012

11326633 (P.T.A.B. Nov. 26, 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.
11/326,633 01/07/2006 James R. Butler COS-1042 1458
25264 7590 11/27/2012
FINA TECHNOLOGY INC
PO BOX 674412
HOUSTON, TX 77267-4412
EXAMINER
DANG, THUAN D
ART UNIT PAPER NUMBER
1772
MAIL DATE DELIVERY MODE
11/27/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAMES R. BUTLER and KEVIN P. KELLY
____________________

Appeal 2011-006013
Application 11/326,633
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 29-31 and 33-38. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a liquid phase alkylation system. Claim 29
is illustrative:

Appeal 2011-006013
Application 11/326,633

2
29. An alkylation system comprising:
an alkylation input stream comprising at least 97 wt.%
benzene;
an alkylating agent comprising a C2 to C4 olefin;
a plurality of reaction vessels having an alkylation
catalyst disposed therein, each reaction vessel adapted to
receive at least a portion of the alkylation input stream and the
alkylating agent and contact the alkylation input stream with the
alkylation catalyst to form an alkylation output and each
reaction vessel adapted for liquid phase alkylation; and
wherein the alkylation system is capable of continuous
alkylation output production during alkylation catalyst
regeneration, wherein the alkylation catalyst regeneration
comprises exposing the alkylation catalyst to an inert gas at a
temperature of at least 500°C, wherein the alkylation system is
adapted to simultaneously alkylate the input stream to form the
alkylation output within at least one reaction vessel and
regeneration the alkylation catalyst within another reaction
vessel and wherein a temperature difference between an
alkylation temperature and regeneration temperature within the
same reaction vessel is at least 100°C.
(App. A at Br. 7.)
The Examiner maintains, and Appellants appeal, the following
rejections:
A. The rejection of claims 29-31 and 33-38 under 35 U.S.C. § 112, ¶
1 as lacking written descriptive support; and
B. The rejection of claims 29-31 and 33-38 under 35 U.S.C. § 103(a)
as obvious over Innes1 in view of Dandekar2 and Ghosh3.

1 Innes et al., US 5,081,323, patented Jan. 14, 1992.
2 Dandekar et al. US 6,781,025 B2, patented Aug. 24, 2004.
3 Ghosh et al., US 5,847,255, patented Dec. 8, 1998.
Appeal 2011-006013
Application 11/326,633

3
OPINION
Because Appellants do not argue any claim apart from the others, we
select claim 29 as representative to resolve the issues on appeal for each
rejection.
WRITTEN DESCRIPTIVE SUPPORT
With respect to the rejection under 35 U.S.C. § 112, ¶ 1, the Examiner
finds that there is no support for the last clause of claim 29, i.e., the clause
that reads: “wherein a temperature difference between an alkylation
temperature and a regeneration temperature within the same reaction vessel
is at least 100°C.” (Ans. 4.) Appellants contend that paragraphs 29, 54, and
55 provide support (Br. 3-4). The Examiner responds that the Specification
only supports a higher temperature for the regeneration step and the claim
encompasses both lower and higher temperatures (Ans. 6).
Paragraph 29 of the Specification discusses the alkylation system 104
(Spec. ¶ [0029]). With regard to alkylation temperature, paragraph 29 states:
Such temperatures and pressures are generally determined by
individual process parameters. For example, the reaction vessel
temperature may be from about 300°F to about 650°F or from
about 400°F to about 520°F, for example.
(id.)
Paragraphs 54 and 55 of the Specification discuss regeneration
conditions (Spec. ¶¶ [0054-55]). Paragraph 54 discloses that the
regeneration may include heating the catalyst to a temperature or series of
temperatures, such as a temperature of from about 50°C to about 200°C
above the purging or alkylation temperature (Spec. ¶ [0054]). Paragraph 55
discloses a specific embodiment of heating the catalyst to “a first
Appeal 2011-006013
Application 11/326,633

4
temperature (e.g., 700°F).” (Spec. ¶ [0055].) The catalyst may then be
heated to second and third higher temperatures (Spec. ¶ [0055]).
In order to meet the written description requirement, the description
must “clearly allow persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (quoting Vas-Cath v. Mahurkar, 935
F.2d 1555, 1562-63 (Fed. Cir. 1991). “In other words, the test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Id.
As pointed out by the Examiner, the claims encompass regeneration
temperatures 100°C lower than the alkylation temperature as well as
regeneration temperatures 100°C higher than the alkylation temperatures.
However, the Specification merely refers to regeneration temperatures above
the alkylation temperature. Because the claimed temperature difference
includes regeneration temperatures below the alkylation temperature, the
claims include embodiments not described in the Specification. By pointing
out the fact that the claims read on embodiments outside the scope of the
description, the Examiner has presented evidence and reasons supporting the
rejection. In re Wertheim, 541 F.2d 257, 263-64 (CCPA 1976). Appellants
provide no convincing evidence or reasoning showing that the full range of
temperatures encompassed by the claims is supported by the Specification.
A preponderance of the evidence supports the Examiner’s finding of
lack of written descriptive support.

Appeal 2011-006013
Application 11/326,633

5
OBVIOUSNESS
With regard to the obviousness rejection over the combination of
Innes, Dandekar, and Ghosh, Appellants point out that Ghosh conducts a gas
phase alkylation process and contend that there is no motivation to combine
any features of a gas phase alkylation process with a liquid phase alkylation
process such as that taught by Innes (Br. 4-5). Appellants further contend
that even if the two references were combined, such a combination lacks a
number of the process features of the claimed invention, such as the
temperature difference (Br. 5-6).
The arguments give rise to an issue of claim interpretation. Namely,
to which one of the statutory classes of invention are the claims directed?
The claims are “system” claims, but in order to be patentable the subject
matter of a claim must fit into one and only one of the statutory claims of
invention enunciated in 35 U.S.C. § 101, i.e., a process, machine,
manufacture, or composition of matter. Claims cannot be directed to
combinations of those classes of invention. See IPXL Holdings, L.L.C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (claims to a
combination of statutory claims of invention are not permitted and are
indefinite).
We interpret the system claims as directed to an apparatus, i.e. a
structure which can be termed a machine or manufacture under 35 U.S.C. §
101. Claims directed to an apparatus must be distinguished from the prior
art in terms of structure. See In re Danly, 263 F.2d 844, 848 (CCPA 1959)
(“Claims drawn to an apparatus must distinguish from the prior art in terms
of structure rather than function”); In re Gardiner, 171 F.2d 313, 315-16
(CCPA 1948) (“It is trite to state that the patentability of apparatus claims
Appeal 2011-006013
Application 11/326,633

6
must be shown in the structure claimed and not merely upon a use, function,
or result thereof.”). Choosing to define an element functionally, i.e., by
what it does, carries with it a risk: Where there is reason to conclude that the
structure of the prior art is inherently capable of performing the claimed
function, the burden shifts to the applicant to show that the claimed function
patentably distinguishes the claimed structure from the prior art structure.
See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman,
655 F.2d 212, 215 (CCPA 1981). Moreover, the recitation of a material
intended to be worked upon by a claimed apparatus does not differentiate the
claimed apparatus structure from the structure of a prior art apparatus. In re
Rishoi, 197 F.2d 342, 345 (CCPA 1952).
As correctly found by the Examiner, Innes teaches an alkylation
reaction vessel having inputs and outputs, and an alkylation catalyst
disposed therein (Ans. 5).
As further correctly found by the Examiner, Ghosh discloses parallel
alkylation reactors (Ans. 5). Ghosh discloses operating the parallel reactors
simultaneously in alkylation mode while periodically taking one reactor off
stream and diverting the feedstream entirely to the other reactor (Ghosh, col.
7, ll. 30-33). This allows regeneration of the catalyst in the off-stream
reactor while alkylation continues in the other reactor (Ghosh, col. 7, ll. 38-
41).
While Ghosh performs the alkylation in the gas phase rather than the
liquid phase as taught by Innes, those of ordinary skill in the art alkylation
art would have understood the benefits of using a parallel reactor
configuration for regenerating catalyst when using a liquid alkylation
Appeal 2011-006013
Application 11/326,633

7
process. A preponderance of the evidence supports the Examiner’s finding
of a reason to incorporate parallel reactors into the apparatus of Innes.
With regard to the other argued limitations of claim 29 (Br. 5), there is
no convincing evidence that the temperatures at which the process is
conducted or the method by which regeneration takes place patentably
distinguish the apparatus structure of the claim from that suggested by the
prior art. Therefore, Appellants have not convinced us of a reversible error
in the rejection.
CONCLUSION
We sustain the Examiner’s rejections.
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

cam