Ex Parte EngDownload PDFPatent Trial and Appeal BoardJan 30, 201411927828 (P.T.A.B. Jan. 30, 2014) Copy Citation 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. 11/927,828 10/30/2007 Curtis N. Eng 07-01 6524 7590 01/30/2014 Christian N. Heausler Kellogg Brown & Root LLC 601 Jefferson Avenue Houston, TX 77002 EXAMINER BULLOCK, IN SUK C ART UNIT PAPER NUMBER 1772 MAIL DATE DELIVERY MODE 01/30/2014 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 CURTIS N. ENG __________ Appeal 2012-007957 Application 11/927,828 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and DONNA M. PRAISS, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON REHEARING The Appellant requests rehearing of a Decision on Appeal dated November 1, 2013, entering the following new grounds of rejection: (1) claims 1-12, 23-37, and 39-42 under 35 U.S.C. § 103(a) as unpatentable over the combination of Tsunoda,1 Hensley,2 and paragraphs [0003] and [0004] of the Appellant’s Specification; and 1 US 6,307,117 B1, issued Oct. 23, 2001. 2 US 5,254,748, issued Oct. 19, 1993. Appeal 2012-007957 Application 11/927,828 2 (2) claim 38 under 35 U.S.C. § 103(a) as unpatentable over the combination of Tsunoda, Hensley, paragraphs [0003] and [0004] of the Appellant’s Specification, and Vora.3 The Appellant argues the Board engaged in impermissible hindsight by relying on the Appellant’s Specification in the new grounds of rejection. Req. Reh’g 5.4 Upon consideration of the Appellant’s Request for Rehearing, the Board has discovered that the designation “admitted prior art” was inadvertently omitted in describing paragraphs [0003] and [0004] of the Appellant’s Specification. The new grounds of rejection entered in the Decision on Appeal dated November 1, 2013, are hereby withdrawn and second new grounds of rejection are hereby entered. Thus, the Appellant’s Request for Rehearing is granted-in-part. NEW GROUNDS OF REJECTION Claims 1-12, 23-37, and 39-42 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Tsunoda, Hensley, and the admitted prior art.5 Claim 1 There is no dispute on this record that Tsunoda discloses a method of producing ethylene, propylene, and butane by cracking C4+ olefins. Ans. 5;6 see also Tsunoda, col. 12, ll. 14-15 (ethylene and propylene are collected from the obtained H2-C3 fraction); Tsunoda, col. 12, ll. 38-48 (butane is 3 US 6,049,017, issued Apr. 11, 2000. 4 Request for Rehearing dated January 2, 2014. 5 Paragraphs [0002] through [0004] of the Appellant’s Specification entitled “Description of the Related Art.” 6 Examiner’s Answer dated February 24, 2012. Appeal 2012-007957 Application 11/927,828 3 separated by the C4 separator). In one embodiment, Tsunoda discloses that the hydrocarbon feedstock is a C4 fraction comprised mainly of C4 hydrocarbons, such as butane, isobutane, butene, and isobutene. Tsunoda, col. 11, ll. 61-67. Thus, we find Tsunoda discloses step [3] of the claimed process. As for step [1] of the claimed process, Hensley discloses a method of producing tertiary alkyl ether compounds, such as MTBE, from a mixture of C4 hydrocarbons. Hensley, col. 4, ll. 51-55. According to one embodiment of the invention, a mixed C4 hydrocarbon feed stream is provided to a hydrogenation/dehydrogenation unit along with an isobutane stream from an isomerization unit. Id. at col. 5, ll. 56-62. Hensley discloses that the reaction product from the hydrogenation/dehydrogenation unit comprises primarily isobutene but also contains significant amounts of butene-1, butene-2, n-butane, and isobutane. Id. at col. 4, l. 67-col. 5, l. 2 and col. 5, ll. 52-54. We find one of ordinary skill in the art would have understood that a reaction product comprising “primarily isobutene” contains an amount of isobutene within the claimed range of “about 20 vol% to about 80 vol%.”7 As for step [2] of the claimed process, Hensley does not disclose that the reaction product from the hydrogenation/dehydrogenation unit bypasses an existing etherification reactor. Rather, Hensley discloses that the reaction product feeds a distillation column, and the overhead from the distillation unit is fed to a MTBE unit. Id. at col. 5, l. 63-col. 6, l. 2. Nonetheless, at the time of the Appellant’s invention, MTBE production was known to be declining and “MTBE manufacturers [were] left holding useless feedstocks and manufacturing assets.” Spec. ¶ [0003]. 7 Isobutene is another name for isobutylene. Appeal 2012-007957 Application 11/927,828 4 Thus, at the time of the Appellant’s invention, “[t]here [was] a need . . . for reallocating feedstocks and manufacturing assets previously allocated to the manufacture of MTBE, thereby providing an economic benefit to MTBE manufacturers.” Id. at ¶ [0004]. Based on this admitted prior art, we find one of ordinary skill in the art would have been motivated to find another use for Hensley’s MTBE feedstocks and manufacturing assets (i.e., Hensley’s hydrogenation/dehydrogenation unit). The reaction product from the hydrogenation/dehydrogenation unit of Hensley (i.e., primarily isobutene with significant amounts of butene-1, butene-2, n-butane, and isobutane) is substantially the same as the hydrocarbon feedstock in the method of Tsunoda (i.e., a C4 fraction comprised mainly of C4 hydrocarbons, such as butane, isobutane, butene, and isobutene). Thus, we find one of ordinary skill in the art would have considered Hensley’s reaction product to be a suitable feedstock in Tsunoda’s method and, based on the admitted prior art, would have reallocated Hensley’s MTBE feedstocks and manufacturing assets to produce the feedstock in Tsunoda’s method. This combination results in step [2] of the claimed process (i.e., bypassing Hensley’s reaction product from the hydrogenation/dehydrogenation unit around an existing etherification reactor). For the reasons set forth above, we conclude that the process recited in claim 1 would have been obvious to one of ordinary skill in the art based on the combined teachings of Tsunoda, Hensley, and the admitted prior art. Claim 2 Claim 2 depends from claim 1 and recites the following additional steps: Appeal 2012-007957 Application 11/927,828 5 selectively separating at least a portion of the second product to provide a third product comprising propylene and a first recycle comprising butane; and recycling at least a portion of the first recycle to the first product prior to cracking the first product. App. Br. 14, Claims App’x. The product obtained by cracking in Tsunoda’s method (i.e., second product) contains propylene, ethylene, and butane. Tsunoda discloses that the second product is selectively separated to provide a third product comprising propylene and a first recycle comprising butane. Tsunoda discloses that at least a portion of the first recycle is returned to the reactor and used as part of the hydrocarbon feedstock in the cracking operation. Tsunoda, col. 12, ll. 1-22, 32-48. Thus, Tsunoda discloses the process steps recited in claim 2. Claim 5 Claim 5 depends from claim 1 and recites that “the first product is heated to a temperature from 90ºC to 370ºC prior to cracking the first product.” App. Br. 15, Claims App’x. Hensley discloses that the reaction temperature in the hydrogenation/dehydrogenation unit is in the range of from about 600º F. to about 1100º F. (i.e., from about 315º C. to about 593º C.). Hensley, col. 4, ll. 31-37. Thus, prior to cracking, the modified Tsunoda process heats the first product to a temperature that overlaps the claimed range. It is well-settled that “even a slight overlap in range establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Thus, the burden shifts to the Appellant to “show that the [claimed] range is critical, generally by showing that the claimed range Appeal 2012-007957 Application 11/927,828 6 achieves unexpected results relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The Appellant has not provided such a showing on this record. Claims 32 and 33 The Appellant argues Hensley does not “teach, show, or suggest the feed comprises about 70% vol or more isobutane (claim 32) or about 70% vol or more isobutane and about 5% vol to about 30% vol n-butane [(claim 33)].” App. Br. 12. Referring to the feeds in Hensley’s Examples 1 and 2, the Appellant argues the “isobutane and n-butane concentrations are far below the claimed ranges.” Id; see also Hensley, col. 8, ll. 50-60 (feed contains 1.56% by weight n-butane); Hensley, col. 9, ll. 41-51 (feed contains 2.00% by weight n-butane). However, “it is well established that the disclosure of a reference is not limited to specific working examples contained therein.” In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982). We find Hensley teaches the concentration of isobutane in the feed stream is a result effective variable. Hensley, col. 4, ll. 51-59; see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art”). Thus, the burden shifts to the Appellant to demonstrate that a feed comprising “about 70% vol or more isobutane” achieves unexpectedly good results. See In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (a prima facie case of obviousness may be rebutted “where the results of optimizing a variable, which was known to be result effective, [are] unexpectedly good”). The Appellant has not made such a showing on this record. Appeal 2012-007957 Application 11/927,828 7 As for the concentration of n-butane recited in claim 33, we find the feeds employed by the Appellant and Hensley are both used for manufacturing MTBE. Thus, it is reasonable to expect that the feeds would have similar n-butane concentrations. In this regard, we note the Appellant does not disclose that the n-butane concentration is critical and indicates that as little as about 1% vol butane may be contained in the feedstock. Spec. ¶ [0019]. Based on the foregoing, the weight of the evidence supports a conclusion of obviousness under § 103(a). Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Tsunoda, Hensley, the Admitted Prior Art, and Vora. As in claim 33, claim 38 recites “the feed contains about 70% vol or more isobutane and about 5% vol to about 30% vol butane.” However, claim 38 includes the additional limitation that “the first recycle comprises about 5% vol to about 20% vol isobutane and about 20% vol to about 80% vol butane.” App. Br. 18, Claims App’x. The Examiner relies on Vora as evidence that the claimed concentration of isobutane and butane in the first recycle would have been obvious to one of ordinary skill in the art. Ans. 10. However, the Appellant argues “Vora simply makes no mention or suggestion as to the claimed composition.” App. Br. 13. The Examiner recognizes that Vora does not expressly disclose the claimed concentration of isobutane and butane in the first recycle. Ans. 10. However, Vora, like Tsunoda, employs a cracking reaction zone to produce ethylene and propylene. See, e.g., Vora, col. 4, ll. 40-47. The Examiner Appeal 2012-007957 Application 11/927,828 8 finds Vora discloses that preventing buildup of paraffins, such as isobutane, in the feed to the cracking reaction zone is necessary. Ans. 10; Vora, col. 9, ll. 54-55. Thus, the Examiner concludes it would have been obvious to one of ordinary skill in the art to “use a recycle with the percentage of butane and isobutane in an appropriate rage [sic, range], including as claimed to prevent buildup of isobutene [sic, isobutane].” Ans. 10. The Appellant has not directed us to any error in the Examiner’s position. Moreover, Tsunoda discloses: In the recycle system, butane contained in the hydrocarbon feedstock is concentrated in the C4 fraction separated by means of the above-mentioned C4 separator. For this reason, if all of the C4 fraction is recycled to the reactor, the butane concentration of the hydrocarbon feedstock charged into the reactor would become high, so that the concentration of at least one olefin having 4 to 12 carbons in the hydrocarbon feedstock may become unsatisfactory. Therefore, it is preferred that only a part of the C4 fraction is recycled to the reactor so as to suppress the increase in the butane concentration of the feedstock. Tsunoda, col. 12, ll. 38-48. Based on the foregoing, we find Vora and Tsunoda teach that the concentrations of isobutane and butane in the first recycle are result- effective variables. See Boesch, 617 F.2d at 276 (“discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art”). The Appellant has not directed us to any evidence demonstrating that a first recycle comprising the claimed concentrations of isobutane and butane achieves unexpectedly good results. See Antonie, 559 F.2d at 620 (a prima facie case of obviousness may be rebutted “where the results of optimizing a variable, which was known to be result effective, Appeal 2012-007957 Application 11/927,828 9 [are] unexpectedly good”). Thus, the weight of the evidence supports a conclusion of obviousness under 35 U.S.C. § 103(a). DECISION Claims 1-12, 23-37, and 39-42 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Tsunoda, Hensley, and the admitted prior art. Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Tsunoda, Hensley, the admitted prior art, and Vora. This decision contains new grounds of rejection under 37 C.F.R. § 41.50(b) which provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). 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