Ex Parte Rose et al

Patent Trial and Appeal BoardDec 31, 2012

11200489 (P.T.A.B. Dec. 31, 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. 11/200,489 08/09/2005 Arthur H. Rose RDH-0509 3928 7590 12/31/2012 ExxonMobil Research and Engineering Company P.O. Box 900 Annandale, NJ 08801-0900 EXAMINER SINGH, PREM C ART UNIT PAPER NUMBER 1771 MAIL DATE DELIVERY MODE 12/31/2012 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 ARTHUR H. ROSE, JAMES M. BROWN, and GREGORY M. MARTIN ____________ Appeal 2011-005590 Application 11/200,489 Technology Center 1700 ____________ Before CHUNG K. PAK, PETER F. KRATZ, and KAREN M. HASTINGS, Administrative Patent Judges. PAK, Administrative Patent Judge DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1 and 3 through 9, all of the claims pending in the above- identified application.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 See Supplemental Appeal Brief filed November 30, 2010 (“App. Br.”) at 6 and 9; Reply Brief filed January 21, 2011 (“Reply Br.”) at 5 and 8; and Examiner’s Answer mailed December 21, 2010 (“Ans.”) at 2. Appeal 2011-005590 Application 11/200,489 2 STATEMENT OF THE CASE The subject matter on appeal is illustrated in the broadest claim on appeal, independent claim 1, which is reproduced below: 1. A method for the determination of optimal operation for a given crude oil feedstream of a refinery pipestiI1 by determining a virtual assay of said crude oil feed comprising: a) feeding a crude oil feedstream into said refinery pipestill wherein said crude oil feedstream is separated into boiling range fraction and determining the yields of the boiling range fractions. b) performing a virtual assay of said crude oil feedstream by the steps in c, d and e, c) determining an IR spectrum of said crude oil feedstream, d) fitting said IR spectrum to a linear combination of known IR spectra in a database to determine the coefficients of the linear combination, wherein the database includes IR spectra of reference crude oils whose boiling range fraction yields are known. e) determining the boiling point fractions yields of said crude oil feedstream from the coefficients of the linear combination and the boiling range fraction yields of the reference etudes, f) comparing the predicted boiling range fraction yields with the actual boiling range fraction yields from the pipestill to determine differences between these fraction yields, g) relating said difference between the fraction yields with the optimal operation of the refinery pipestill for the crude oil Appeal 2011-005590 Application 11/200,489 3 feedstream. [(See App. Br. 14-15 (Claims App’x).)] According to page 3, paragraph 0006, of the Specification,“[r]efinery crude units” are referred to as “[p]ipestils”. Appellants seek review of the following grounds of rejection maintained by the Examiner in the Answer: 1) Claims 1 and 5 through 9 under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent 5,452,232 issued to Espinosa et al. on September 19, 1995 (hereinafter referred to as “Espinosa”); and 2) Claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Espinosa in view of EP 0 859 236 A1 published in the name of BP Chemicals S.N.C. and BP Chemicals Limited on August 19, 1998 (hereinafter referred to as “BP Chemicals”)2 (See App. Br.9; and Reply Br. 8.) DISCUSSION The Examiner relied on columns, 1, lines 48-60, column 16, lines 5-68, and column 21, lines 11-15, of Espinosa to show, among other things, steps of “determining the property by applying a correlation between the property and the absorbance values, the correlating being determined experimentally by multivariate regression, depending of the type of 2 The Examiner has withdrawn the rejections based on 35 U.S.C. § 112, first and second paragraphs, set forth in the final Office action mailed December 18, 2009. (See Ans. 2-3.) Appeal 2011-005590 Application 11/200,489 4 spectrometer used, the property required, and the frequencies used [(emphasis added)].” On the other hand, Appellants contend that Espinosa does not teach or would have suggested the virtual assay steps d), e), f), and g) recited in claim 1 on appeal for determining optimal operation for a given crude oil feed stream of a refinery pipestill. (See, e.g., App. Br. 12 and Reply Br. 11.) Thus, the dispositive question is: Has the Examiner demonstrated that Espinosa teaches or would have suggested the virtual assay steps d), e), f), and g) recited in claim 1 on appeal for determining optimal operation for a given crude oil feed stream of a refinery pipestill? On this record, we answer this question in the negative. As is apparent from the Answer, it is not clear how the specific steps d), e), f), and/or g) recited in claim 1can be derived from the steps of “determining the property by applying a correlation between the property and the absorbance values, the correlating being determined experimentally by multivariate regression, depending of the type of spectrometer used, the property required, and the frequencies used” in Espinosa. On this record, the Examiner did not adequately explained why the above steps in Espinosa correspond to or would have suggested the virtual assay steps d), e), f), and/or g) recited in claim 1. Recognizing this deficiency in Espinosa, the Examiner, at page 9 of the Answer, also referred to U.S. Patent 6,662,116 discussed at page 6 of the Specification to show that the “multivariate regression” taught by Appeal 2011-005590 Application 11/200,489 5 Espinosa involves the virtual assay steps d), e), f), and g) recited in claim 1. However, the Examiner did not identify any teachings in U.S. Patent 6,662,116, which clearly equate the “multivariate regression” taught by Espinosa with the virtual assay steps d), e), f), and g) recited in claim 1. (See, e.g., Reply Br. 13.) Rather, it is said to disclose a virtual assay of a crude oil feed stream comprising steps involving “a multivariate analytical technique and/or inspection” of “multivariate analytical data” similar to those claimed. (See Spec. 6 and Ans. 9.) Although U.S. Patent 6,662,116 discussed at page 6 of the Specification appears to be much closer to the claimed invention than Espinosa, we need not consider it in evaluating the propriety of the Examiner’s rejections since the Examiner did not include it in the statements of rejection set forth in the Answer. See In re Hoch, 428 F.2d 1341, 1342 n. 3 (CCPA 1970)(“Where a reference is relied on to support a rejection, whether or not in a ‘minor capacity,’ there would appear to be no excuse for not positively including the reference in the statement of the rejection.”). Accordingly, on this record, we are constrained to concur with Appellants that the Examiner has not demonstrated that Espinosa teaches or would have suggested the virtual assay steps d), e), f), and/or g) recited in claim 1 for determining optimal operation for a given crude oil feed stream of a refinery pipestill. (See, e.g., App. Br. 12 and Reply Br. 11.) In rejecting claims 3 and 4, the Examiner further relied upon BP Chemicals to show a virtual assay involving the use of NIR Appeal 2011-005590 Application 11/200,489 6 spectroscopy to determine APJ gravity and viscosity of a feed stream to optimize the separation of the feed stream. (See Ans. 6 and BP Chemicals, abstract.) However, the Examiner did not rely upon BP Chemicals to remedy the deficiencies discussed above. (See Id.) CONCLUSION In view of the foregoing, the decision of the Examiner rejecting the claims on appeal under 35 U.S.C. § 103(a) is REVERSED. REVERSED sld