`571-272-7822
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` Paper No. 46
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` Entered: May 3, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CELANESE INTERNATIONAL CORPORATION,
`Petitioner,
`
`v.
`
`DAICEL CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00163
`Patent 8,940,932 B2
`____________
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`TINA E. HULSE, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`INTRODUCTION
`Celanese International Corporation (“Petitioner”) filed a Petition for
`an inter partes review of claims 1–14 of U.S. Patent No. 8,940,932 B2 (“the
`’932 patent,” Ex. 1001). Paper 1 (“Pet.”). Daicel Corporation (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). On May
`8, 2017, the Board instituted a review of the patentability of the challenged
`claims. Paper 9 (“Dec.”).
`Thereafter, Patent Owner filed a Response (Paper 18 (“PO Resp.”)),
`and Petitioner filed a Reply (Paper 26). The parties also briefed whether
`certain exhibits should be excluded from the record. Papers 34, 35, 37–40.
`In addition, Patent Owner filed observations on the cross-examination of
`Petitioner’s reply declarant (Paper 33), and Petitioner filed a response
`thereto (Paper 36). An oral hearing for this proceeding was held on January
`23, 2018. See Paper 45 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6 and issues this final
`written decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons provided below, we conclude Petitioner has established by a
`preponderance of the evidence that claims 1 and 3–14 of the ’932 patent are
`unpatentable. Petitioner, however, has failed to meet its burden of proof
`regarding the unpatentability of claim 2.
`Related Proceedings
`The parties represent that there are no related matters that would
`affect or be affected by this proceeding. Pet. 1; Paper 14, 1.
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`The ’932 Patent
`The ’932 patent “relates to a process for stably producing acetic acid
`by carbonylation of methanol in the presence of a metal catalyst (such as a
`rhodium catalyst) and methyl iodide.” Ex. 1001, 1:5–8.
`Before the ’932 patent, “[v]arious industrial production processes of
`acetic acid ha[d] been known.” Id. at 1:12–13. One of them, according to
`the ’932 patent, is “highly efficient” because of the “addition of a catalyst
`stabilizer (such as an iodide salt) and the reaction under a low water content
`condition.” Id. at 1:17–22. The ’932 patent states that the reaction mixture
`contains impurities, such as acetaldehyde, which deteriorates the quality of
`acetic acid. Id. at 1:25–34. The ’932 patent acknowledges that prior-art
`methods exist to reduce the concentration of acetaldehyde in the reaction
`system. Id. at 1:57–2:41. For example, according to the ’932 patent,
`Japanese Patent Application Laid-Open Publication No. 8-67650
`(JP-8-67650A, Patent Document 2) discloses a process for
`producing high-purity acetic acid, comprising allowing methanol
`to continuously react with carbon monoxide in the presence of a
`rhodium catalyst, an iodide salt, and methyl iodide, wherein the
`reaction is carried out by removing acetaldehyde from a process
`liquid being circulated into a reactor to maintain the acetaldehyde
`concentration in the reaction mixture at 400 ppm or lower. . . .
`In addition, this patent document discloses, relating to a process
`for producing acetic acid while removing acetaldehyde, that the
`process comprises separating the reaction mixture into a volatile
`phase containing acetic acid, methyl acetate and methyl iodide
`and a low-volatile phase containing the rhodium catalyst,
`distilling the volatile phase to obtain a product mixture
`containing acetic acid and an overhead containing methyl acetate
`and methyl iodide, and recirculating the resulting overhead into
`the reactor, wherein the overhead or a carbonyl impurity
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`(particularly acetaldehyde) condensate thereof is allowed to
`contact with water to separate an organic phase containing
`methyl acetate and methyl iodide and an aqueous phase
`containing the carbonyl impurity, and the organic phase is
`recirculated into the reactor.
`Id. at 2:6–35. This document, however, the ’932 patent states, “does not
`disclose that the flow rate of the overhead is controlled in recirculating the
`overhead into the reactor.” Id. at 2:42–44.
`The invention of the ’932 patent allegedly provides a process for
`stably producing acetic acid while (1) efficiently removing acetaldehyde,
`and/or (2) recycling methyl iodide as a catalyst with a high efficiency. Id. at
`2:57–62.
`
`Illustrative Claim
`Among the challenged claims, claim 1 is independent. It is
`reproduced below:
`1.
`A process for producing acetic acid, which comprises:
`a reaction step for continuously allowing methanol to react with
`carbon monoxide in the presence of a catalyst system
`comprising a metal catalyst, a halide salt, and methyl iodide
`in a carbonylation reactor,
`a flash evaporation step for continuously feeding a flasher with a
`reaction mixture from the reactor and separating a lower
`boiling point component (2A) containing product acetic acid
`and methyl iodide and a higher boiling point component (2B)
`containing the metal catalyst and the halide salt,
`an acetic acid collection step for continuously feeding a
`distillation column with the lower boiling point component
`(2A), and separating a lower boiling point component (3A)
`containing methyl iodide and by-product acetaldehyde and a
`stream (3B) containing acetic acid to collect acetic acid,
`4
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`Claims
`1, 4, 8, 12, 14
`
`a condensation step for condensing and temporarily holding the
`lower boiling point component (3A) in a decanter and
`discharging the lower boiling point component (3A) from the
`decanter, and
`a separation and recycling step for separating the lower boiling
`point component (3A) discharged from the decanter into
`acetaldehyde and a liquid residue and recycling the liquid
`residue to a step from the reaction step to the acetaldehyde-
`separation step,
`wherein in the condensation step, the amount of the lower boiling
`point component (3A) to be held is adjusted or controlled
`based on a fluctuating flow rate of the lower boiling point
`component (3A) to be fed to the decanter, and the amount of
`the lower boiling point component (3A) to be fed to the
`separation and recycling step is adjusted or controlled.
`Reviewed Grounds of Unpatentability
`We instituted inter partes review of the following grounds of
`unpatentability:
`Ground
`1
`
`Basis
`§ 103
`
`References
`Zinobile,1 Hallinan,2 and Ochiai3,4
`
`
`1 Zinobile, et al., U.S. Patent Application Publication No. 2006/0247466 A1,
`issued November 2, 2006 (Ex. 1010).
`2 Hallinan, et al., U.S. Patent No. 6,552,221 B1, issued April 22, 2003
`(Ex. 1011).
`3 Shinya Ochiai, U.S. Patent No. 5,352,415, issued October 4, 1994
`(Ex. 1009).
`4 Petitioner does not explicitly include Ochiai in the asserted obviousness
`grounds. See Pet. 19, 32, 37, 44, 47. In the Decision to institute, we,
`however, declined to, as Patent Owner would have us, deny the Petition
`based on this fact. Dec. 10–11. Instead, we added Ochiai to all reviewed
`grounds. Id. at 11.
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`Ground
`2
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`Claims
`2–4
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`References
`Zinobile, Hallinan, Balchen,5 and
`Ochiai
`Zinobile, Hallinan, Aubigne,6 and
`Ochiai
`Zinobile, Hallinan, Balchen,
`Baasel,7 and Ochiai
`Zinobile, Hallinan, Balchen,
`Baasel, Kister,8 and Ochiai
`In support of their respective arguments, Petitioner relies on the
`Declarations of James B. Riggs, Ph.D. (Ex. 1002) and Ronnie Michael
`Hanes, Ph.D. (Ex. 1041), and Patent Owner relies on the Declaration of
`Vijay S. Bhise, Eng. Sc.D. (Ex. 2006).9
`ANALYSIS
`Principles of Law
`To prevail in this inter partes review of the challenged claims,
`Petitioner must prove unpatentability by a preponderance of the evidence.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`
`Basis
`§ 103
`
`§ 103
`
`§ 103
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`§ 103
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`3
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`4
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`5
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`5–7
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`4, 13
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`3, 9–11
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`5 Balchen et al., Process Control, Structures and Applications (1988)
`(Ex. 1019).
`6 Aubigne et al., U.S. Patent No. 5,416,237, issued May 16, 1995 (Ex. 1012).
`7 William D. Baasel, Preliminary Chemical Engineering Plant Design (2d
`Ed. 1990) (Ex. 1021).
`8 Henry Z. Kister, Distillation Operation (1990) (Ex. 1025).
`9 Patent Owner has moved to exclude the Declarations of Dr. Riggs and Dr.
`Hanes (Paper 34), whereas Petitioner has moved to exclude the Declaration
`of Dr. Bhise (Paper 35). As explained below, we deny the motions to
`exclude filed by both parties. Instead, we consider each challenged
`testimony and accord it proper weight.
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The strength of each
`of the Graham factors must be weighed in every case and must be weighted
`en route to the final obviousness determination. See, e.g., Stratoflex, Inc. v.
`Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983) (instructing that
`evidence of secondary considerations, when present, must always be
`considered in determining obviousness).
`“[A] patent composed of several elements is not proved obvious
`merely by demonstrating that each of its elements was, independently,
`known in the prior art.” KSR, 550 U.S. at 418. “[I]t can be important to
`identify a reason that would have prompted a person of ordinary skill in the
`relevant field to combine elements in the way the claimed new invention
`does.” Id. Moreover, a person of ordinary skill in the art must have had a
`reasonable expectation of success of doing so. PAR Pharm., Inc. v. TWi
`Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014).
`We analyze the instituted grounds of unpatentability in accordance
`with these principles.
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`Claim Construction
`In an inter partes review, the Board interprets a claim term in an
`unexpired patent according to its broadest reasonable construction in light of
`the specification of the patent in which it appears. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`that standard, and absent any special definitions, we assign claim terms their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art at the time of the invention, in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Any special definitions for claim terms must be set forth with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`In the Decision to Institute, we agreed with Petitioner and construed
`the term “buffering function” to mean “ability to temporarily retain.” Dec.
`6–7. We also stated that there was no need to construe any other term
`expressly. Id. at 7. During trial, Patent Owner does not dispute these
`determinations. PO Resp. 3. Having considered the complete record
`developed at trial, we see no reason to change our interpretation of the
`claims.
`
`The Level of Ordinary Skill in the Art
`The determination of the level of ordinary skill in the art is an integral
`part of the Graham analysis. Custom Accessories, Inc. v. Jeffrey–Allan
`Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). The person of ordinary
`skill in the art is a hypothetical person who is presumed to know the relevant
`prior art. Id.
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`The parties propose facially different definitions of a person of
`ordinary skill in the art. Even though the parties challenge each other’s
`argument on this point, for purposes of this Decision, we do not discern
`material differences between the definitions.
`According to Petitioner,
`A person of ordinary skill in the art of acetic acid production as
`of October 6, 2010 is a person with a background in chemical
`engineering and chemical processes who has a range of
`knowledge roughly equivalent to the knowledge and/or training
`of a person holding the degree of Bachelor of Science in
`Chemistry, Chemical Engineering, or equivalent, and at least
`three years of experience with chemical processes. (Ex. 1002,
`¶¶ 16-20). A POSITA [person of ordinary skill in the art] would
`also have a working knowledge of carbonylation processes. (Id).
`Pet. 16. Patent Owner contends that
`the POSA [person of ordinary skill in the art] for acetic acid
`production in October 2010 would have either a bachelor’s
`degree or a master’s degree in chemistry or chemical engineering
`and (i) 2-4 years of industry experience in acetic acid production
`or (ii) 2-4 years of industry experience in the production of
`materials similar to acetic acid, such as acetic anhydride.
`PO Resp. 10 (citing Ex. 2006 ¶ 35).
`Petitioner asserts that by defining a POSITA as having production
`experience for acetic acid or acetic anhydride, “Patent Owner proposed two
`contradictory POSITA[]s.” Reply 8. According to Petitioner, the formation
`of acetic anhydride is an anhydrous (water-free) process, which does not
`involve either the “condensation step” or the “separation and recycling step”
`of claim 1. Id. Thus, Petitioner argues that “Patent Owner’s POSITA
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`definition is off-base and inappropriate for this proceeding.” Id. We
`disagree.
`As an initial matter, challenged claim 1 includes multiple steps other
`than the “condensation step” and the “separation and recycling step.” Thus,
`we decline to discount Patent Owner’s proposed definition of the ordinary
`skill level merely because it includes experience with an anhydrous process.
`More importantly, it is undisputed that acetic anhydride, like acetic acid, is
`produced through carbonylation processes. See, e.g., Ex. 1005, 3:26–50;
`Ex. 1027, 116–17. In our view, an ordinary artisan having production
`experience for acetic anhydride falls squarely within Petitioner’s definition:
`one with a working knowledge of carbonylation processes.
`Patent Owner argues that an ordinary artisan according to Petitioner’s
`definition “requires only ‘at least three years of experience with chemical
`processes’ generally.” PO Resp. 4. We disagree with this characterization.
`Indeed, Petitioner proposes that an ordinary artisan, in addition to having the
`general background in chemical engineering and chemical processes, “would
`also have a working knowledge of carbonylation processes.” Pet. 16 (citing
`Ex. 1002 ¶¶ 16–20). According to Dr. Riggs, “working knowledge” means
`“plant experience,” including “experience in an actual acetic acid production
`plant.” Ex. 2005, 27:6–12.
`We also decline, as Patent Owner would have us, to limit the relevant
`art narrowly to acetic acid production only. To define the proper scope of
`prior art, we determine (1) whether the art is from the same field of
`endeavor, regardless of the problem addressed, and (2) if the reference is not
`within the field of the inventor’s endeavor, whether the reference still is
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`reasonably pertinent to the particular problem with which the inventor is
`involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
`Here, the challenged ’932 patent is directed to producing acetic acid
`through a carbonylation process. See Ex. 1001, 1:5–8. A general
`carbonylation process, although broader than, is nevertheless reasonably
`pertinent to, a process for acetic acid production, because “it is one which,
`because of the matter with which it deals, logically would have commended
`itself to an inventor’s attention in considering his problem.” In re Clay, 966
`F.2d 656, 659 (Fed. Cir. 1992). Indeed, as Patent Owner emphasizes, an
`ordinary artisan must understand all the steps in the “continuous or
`integrated process” of acetic acid production. PO Resp. 7. Challenged
`claim 1 recites a reaction step that requires a metal catalyst as well as steps
`to separate and remove impurities. Evidence of the record shows that these
`steps are not unique to acetic acid production, but rather, are common to
`carbonylation processes.
`For example, as Patent Owner points out, Zinobile, Ochiai, and
`Aubigne all relate to the production of acetic acid. PO Resp. 9 (citing
`Exs. 1009, 1010, 1012). Yet, each of these references discusses prior art
`relating to general carbonylation process. Indeed, both Zinobile and Ochiai
`refer to U.S. Patent No. 3,769,329 (“the ’329 patent”) for teaching the
`carbonylation catalysts. Ex. 1009, 1:13–22; Ex. 1010 ¶ 4. The ’329 patent
`relates to a process for producing carboxylic acids and esters, including, but
`not limited to, acetic acid. Ex. 3001, Abstract, 3:15–30, claims. Similarly,
`Aubigne refers to “UK patent GB 1,233,121[, which] describes a process for
`the production of an organic acid or its corresponding ester by carbonylation
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`using a rhodium catalyst.” Ex. 1012, 1:13–15. It also discusses UK patent
`GB 1,350,726 and UK patent GB 1,343,855, each of which teaches the
`purification of carboxylic acids, and not acetic acid specifically. Id. at 1:16–
`48. In other words, the prior art shows that an ordinary artisan, in addressing
`acetic acid production, would have considered references related to general
`carbonylation processes.
`In sum, for purposes of this Decision, we do not find material
`differences between the parties’ proposed skill level. We further note that
`the prior art itself demonstrates the level of skill in the art. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific
`findings regarding ordinary skill level are not required where the prior art
`itself reflects an appropriate level).
`Obviousness over Zinobile, Hallinan, and Ochiai
`Petitioner argues that claims 1, 4, 8, 12, and 14 would have been
`obvious over the combination of Zinobile, Hallinan, and Ochiai. Pet. 19–31.
`After reviewing the entire record, we determine that Petitioner has
`established by a preponderance of the evidence that claims 1, 4, 8, 12, and
`14 are unpatentable over the combination of Zinobile, Hallinan, and Ochiai.
`We focus our analysis on claim 1.
`Zinobile
`Zinobile teaches its invention of “an improved process for the
`reduction and/or removal of permanganate reducing compounds” is
`particularly useful in the low water rhodium-catalyzed carbonylation of
`methanol to produce acetic acid. Ex. 1010 ¶¶ 2, 26. Permanganate reducing
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`compounds include acetaldehyde. Id. ¶ 8. Figure 1 illustrates various
`embodiments of the invention of Zinobile.
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`Figure 1 of Zinobile shows a “typical reaction and acetic acid
`recovery system that is used for the iodide-promoted rhodium catalyzed
`carbonylation of methanol to acetic acid,” which “includes a liquid phase
`carbonylation reactor, flasher, and a methyl iodide acetic acid light ends
`column (‘light ends column’) 14.”10 Ex. 1010 ¶ 34. According to Zinobile,
`In the process, carbonylation product obtained in the reactor is
`provided to the flasher where a volatile (“vapor”) overhead
`stream comprising acetic acid and a less volatile catalyst phase
`(catalyst-containing solution) are obtained.
` The volatile
`overhead stream comprising acetic acid is provided by stream 26
`to the light ends column 14 where distillation yields a purified
`acetic acid product that is removed via sidestream 17 and an
`
`10 It is undisputed that the “splitter column” described in the Specification
`(or the “distillation column” recited in claim 1) of the ’932 patent and
`Ochiai, is the same as the “light ends column” in Zinobile and Hallinan.
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`overhead distillate stream 28 (hereafter “low-boiling overhead
`vapor stream”). Acetic acid removed via sidestream 17 can be
`subjected to further purification, such as to a drying column for
`selective separation of acetic acid from water.
`Id. Low-boiling overhead vapor stream 28 is condensed and directed to an
`overhead receiver decanter 16. Id. ¶ 38. Once in decanter 16, low-boiling
`overhead vapor stream 28 separates into a light phase and a heavy phase. Id.
`The condensed light liquid phase 30 is directed to distillation column 18 for
`further processing and to remove acetaldehyde and other impurities (id.
`¶ 46), whereas the condensed heavy liquid phase can be recirculated, either
`directly or indirectly, to the reactor (id. ¶ 45). A portion of stream 30 also
`can be directed back to the light ends column 14 as reflux stream 34. Id.
`¶ 51.
`Petitioner provides a claim chart, matching each step of claim 1 with
`the teachings of Zinobile. Pet. 19–22 (citing e.g., Ex. 1010 ¶¶ 4, 31, 32, 34,
`37, 38, 44, 46, 47, 52, Fig. 1). Patent Owner does not dispute these
`representations. After reviewing the record, we adopt this claim chart as our
`own findings, and we are persuaded that Zinobile teaches a reaction step, a
`flash evaporation step, an acetic acid collection step, a condensation step,
`and a separation and recycling step, as recited in challenged claim 1.
`In addition to the steps, claim 1 also recites “wherein in the
`condensation step, the amount of the lower boiling point component (3A) to
`be held is adjusted or controlled based on a fluctuating flow rate of the lower
`boiling point component (3A) to be fed to the decanter, and the amount of
`the lower boiling point component (3A) to be fed to the separation and
`recycling step is adjusted or controlled.”
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`Petitioner acknowledges Zinobile “does not explicitly disclose that the
`lower boiling point component (3A) has a fluctuating flow rate.” Pet. 22.
`Citing the Declaration of Dr. Riggs, however, Petitioner argues that
`fluctuating flow rates in continuous carbonylation processes were well
`known to an ordinary artisan. Id. (citing Ex. 1002 ¶¶ 64–66). According to
`Petitioner, Ochiai “definitively states that fluctuations in flow rates begin
`with the carbonylation reactor product, and carry through the separation
`process, including in the low boiling overhead stream 28 of Zinobile.” Id. at
`22 –23 (citing Ex. 1002 ¶¶ 64–66), id. at 25 (citing Ex. 1009, 2:25–37,
`Figs. 1, 7A–C).
`Petitioner also acknowledges Zinobile does not expressly disclose that
`“the amount of the lower boiling point component (3A) to be held is
`adjusted or controlled based on a fluctuating flow rate of the lower boiling
`point component (3A) to be fed to the decanter,” as recited in the wherein
`clause of claim 1. Pet. 23. According to Petitioner, however, Hallinan
`teaches this limitation. Id. at 24. Petitioner argues that Hallinan teaches
`“level controlling the decanter of the light ends (splitter) column in response
`to fluctuating flow rates.”11 Pet. 24 (citing Ex. 1011, 5:41–60), see also id.
`(“Hallinan specifically describes adjusting the level, and in turn the flow of
`the light and heavy phases of the splitter column decanter.”) (citing
`
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`11 Level control is “control of the level of liquid in a tank.” Ex. 1019, 7.
`Petitioner does not explicitly rely on Balchen (Ex. 1019) in this obviousness
`ground of challenge. But, because, as Patent Owner states, “Balchen is a
`decades-old textbook” (PO Resp. 51), we find an ordinary artisan would
`have been aware of the basic teachings therein.
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`Ex. 1011, 5:43–67, 8:1–20, 8:40–42), id. at 25–26 (citing Ex. 1011, 5:42–55,
`6:41–47).
`Petitioner further matches teachings of both Zinobile and Hallinan
`with the limitation “the amount of the lower boiling point component (3A)
`to be fed to the separation and recycling step is adjusted or controlled,” as
`recited in the wherein clause of claim 1. Pet. 26–27 (citing Ex. 1010 ¶¶ 44,
`45; Ex. 1011, 5:57–61).
`In addition, Petitioner asserts that an ordinary artisan would have had
`a reason to combine the teachings of Zinobile and Hallinan. Pet. 27–28.
`According to Petitioner, an ordinary artisan “beginning with Zinobile and
`aware of the economically disadvantageous flow fluctuations explained by
`Ochiai, would look to Hallinan because Hallinan discloses process control
`during acetic acid production that reduces flow fluctuations by use of level
`control.” Id. at 27. Petitioner also argues because the level control taught in
`Hallinan is a “generally accepted method of overall plant control,” the
`combination of Zinobile and Hallinan “would operate according to known
`methods to yield predictable results” and provide a reasonable expectation of
`success. Id. at 28 (citing Ex. 1011, 5:42–44).
`Patent Owner contends Petitioner has not met its burden of showing
`the obviousness of claim 1 over the combination of Zinobile, Hallinan, and
`Ochiai. PO Resp. 14–43. According to Patent Owner, neither Hallinan nor
`Ochiai teaches the limitation recited in the wherein clause of claim 1. Id. at
`28–35. Patent Owner also asserts there is no reason to combine the
`teachings of Zinobile, Hallinan, and Ochiai (id. at 15–27, 36–41), and there
`is no reasonable expectation of success when doing so (id. at 42–43). After
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`reviewing the entire record, we find Petitioner’s argument more persuasive.
`We address each argument presented by Patent Owner in turn.12
`Ochiai
`Patent Owner argues “Ochiai does not teach that the flow rate of the
`lower boiling point component (3A) necessarily fluctuates in the
`carbonylation process” because “Ochiai specifically solves the problem of
`fluctuation and therefore, teaches the POSA that not all flows in an acetic
`acid production process fluctuate.” Id. at 33 (citing Ex. 1009, 2:47–65,
`3:56–61, 6:57–59; Ex. 2006 ¶¶ 89–90). We are not persuaded.
`Ochiai teaches an improved level control system “to control the liquid
`levels in a reactor-flasher combination used particularly for the
`carbonylation of methanol to acetic acid.” Ex. 1009, Abstract. According to
`Ochiai,
`low water carbonylation process
`the
`Implementation of
`necessitated changes in the means to control the liquid levels in
`the reactor and flasher that were used under high water
`carbonylation conditions. Unfortunately, such changes have led
`to a wider variability in these liquid levels as well as reactor
`product flow rate and flasher recycle flow rate per a given
`methanol feed rate to the reactor.
`Id. at 2:24–31.
`
`
`12 Patent Owner faults Petitioner for not being “able to locate and cite a
`singular reference that disclosed all of the allegedly very common claim
`elements.” PO Resp. 2. Petitioner challenges the claims based on
`obviousness, and not anticipation. Thus, there is no requirement that a
`single reference must disclose all claim limitations.
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`We agree with Patent Owner that Ochiai focuses on the reactor and
`flasher, and specifically discusses the reactor product flow rate to the flasher,
`the reactor and flasher liquid levels, and the catalyst recycle flow rates. See
`PO Resp. 34–35 (citing Ex. 2006 ¶¶ 86–88, 118, 120–122; Ex. 1009, 2:58–
`65, 3:50–55, 4:3–9). We, however, disagree with Patent Owner that “Ochiai
`Invention Eliminates Flow Fluctuations.” See id. at 33; see also id. at 35
`(arguing “Ochiai solves those needs through a process where [certain type
`of] controllers for the reactor and flasher are used”) (citing Ex. 1009, 3:56–
`4:14).
`As support, Patent Owner refers us to a single sentence, where Ochiai
`states its control system “eliminates” the oscillations caused by the integral
`control. Tr. 28:22–26 (citing Ex. 1009, 11:26). But, the rest of Ochiai,
`including the passage Patent Owner relies on, generally acknowledges its
`system “reduces”—not “eliminates”—the oscillations in process variables,
`including the liquid levels and flow rates of the intermediate streams. See,
`e.g., Ex. 1009, 3:56–4:14 (repeatedly stating “reduce the variability,”
`“oscillations in process variables are reduced,” and “reduces the
`oscillations”); see also id. Fig. 7, 13:2–3 (explaining that Fig. 7 shows “the
`catalyst recycle flow and reactor product flow were relatively constant”)
`(emphasis added). In fact, Dr. Bhise, the declarant for Patent Owner,
`admitted that, even with the controls of Ochiai, there still are fluctuations
`within the system. Ex. 1050, 346:4–15, 350:3–12. As such, we agree with
`Petitioner that “even when the reactor and flasher flows are controlled with
`level controls, fluctuations are still present.” See Reply 11.
`
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`Because, as Patent Owner emphasizes, acetic acid production is a
`continuous or integrated process (PO Resp. 7 (citing Ex. 2006 ¶¶ 35, 37–
`39)), and because, in Zinobile, the light ends column is downstream of the
`flasher (Ex. 1010 ¶ 34), we agree with Dr. Riggs and Petitioner that
`fluctuation in the output of the flasher would affect the flow of the low
`boiling overhead stream 28 exiting the light ends column and cause it to
`fluctuate. See Pet. 22–23 (arguing that an ordinary artisan would have
`known “from general chemical engineering principles (as explained for
`example, in Ochiai) that the low boiling overhead stream 28 of Zinobile
`would have a fluctuating flow rate during operation”) (citing Ex. 1002
`¶¶ 64–66); see also Ex. 1019, 7 (describing “fluctuations in flows in cascade
`systems where the output of one unit is the input to the next”).
`Hallinan
`Patent Owner argues Hallinan teaches away from controlling the
`amount in the decanter. Id. at 28–32 (citing Ex. 1011, 1:64–2: 14, 4:33–50,
`5:40–7:5, 7:9–23, 7:26–30, 7:52–8:1, 8:4–7; Ex. 2006 ¶¶ 80, 81, 82, 84,
`123–127, 130). Instead, according to Patent Owner, Hallinan teaches
`control based on concentration only. Id. at 30. We are not persuaded by this
`argument, either.
`To be sure, the invention of Hallinan teaches “a method of real time
`process control of component concentrations in a reaction system for the
`production of acetic acid from the carbonylation of methanol” by analyzing
`“the concentration of one or more components” in various samples using an
`infrared analyzer, and the “concentration measurements are used to make
`adjustments in the process.” Ex. 1011, 1:66–2:11. Hallinan, however, also
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`teaches the “generally accepted . . . concept of inventory control, also known
`as level control.” Id. at 5:4