Ex Parte 6870072 et al

Patent Trial and Appeal Board

May 14, 2013

95001387 (P.T.A.B. May. 14, 2013)

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.
95/001,387 07/12/2010 6870072 2001B094 2854
23455 7590 05/15/2013
EXXONMOBIL CHEMICAL COMPANY
5200 BAYWAY DRIVE
P.O. BOX 2149
BAYTOWN, TX 77522-2149
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/15/2013 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
____________________

UOP LLC
Requester and Respondent
v.

EXXONMOBIL CHEMICAL PATENTS, INC.
Patent Owner and Appellant
____________________

Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2
Technology Center 3900
____________________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

2
STATEMENT OF THE CASE
Appellant and Patent Owner ExxonMobil Chemical Patents Inc.
(“Exxon” or “Patent Owner”), appeals under 35 U.S.C. § 134(b) and 315(a)
(2002)
1
from the final rejection of claims 1-96 set forth in the Right of
Appeal Notice (“RAN”) mailed January 5, 2012.
2
See Appeal Brief 5-6
(filed April 20, 2012) (“App. Br.”).
Requester and Respondent UOP LLC (“UOP” or “Requester”) urges
that the Examiner’s rejections be affirmed.
3
See Respondent Brief 14 (filed
May 18, 2012) (“Resp. Br.”).
We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm.

THE INVENTION
This proceeding arose from a request by UOP for an inter partes
reexamination of U.S. Patent 6,870,072 B2 (“’072 patent”).
4
The ’072
Patent is entitled “Heat Recovery in an Olefin Production Process,” issued to
David R. Lumgair and James Harding Beech (Mar. 22, 2005), and is
assigned to ExxonMobil Chemical Patents Inc. ’072 Patent, cover page;
App. Br. 3.

1
The America Invents Act states that the provisions of 35 U.S.C. §§ 134 and
315 as in effect on September 15, 2012 shall continue to apply to inter
partes reexaminations that are requested before September 16, 2012. See
Pub. L. No. 112-29, §§ 6(c)(3)(C) and 7(e).
2
The Examiner’s Answer mailed June 1, 2012 incorporates the RAN by
reference.
3
UOP indicated it would cross-appeal the Examiner’s refusal to adopt
additional proposed rejections but ultimately no cross-appeal was filed. See
Notice of Cross-Appeal filed February 16, 2012.
4
Request for Reexamination filed July 12, 2010.
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

3
The ’072 Patent “relates to producing and recovering olefins from an
oxygenate feed stream and more particularly to heat recovery in the process
of producing and recovering olefins from an oxygenate feed stream.” ‘072
Patent, col. 1, ll. 6-9. The process is known in the art “as an oxygenate to
olefin process (‘OTO’) process.” Id. at col. 1, ll. 25-26.
The ’072 Patent states that “the recovery of olefins from an OTO
process involves unique technical challenges.” Id. at col. 1, ll. 36-37. For
example, catalyst used in such processes “often becomes entrained in an
olefin effluent stream leaving the reactor.” Id. at col. 1, ll. 43-44. Certain
efforts to separate the catalyst from the effluent stream (e.g., by using a
cyclone separator) and thereby recapture it subjects the catalyst to
mechanical stresses that can cause disintegration of the catalyst into dust-
like particles, commonly referred to as catalyst fines, which become
entrained in effluent stream. Id. at col. 1, ll. 45-61. Ultimately, “catalyst
particles sometimes fall out of the gaseous effluent stream and deposit on
downstream equipment in a phenomenon known to those skilled in the art as
fouling[, which] is the accumulation of solid deposits on surfaces of the
recovery train of a reactor such as an OTO reactor.” Id. at col. 2, ll. 20-26.
According to the ’072 Patent, such fouling can be prevented “if the
temperature of the effluent stream is maintained above its dew point
temperature prior to entering a solids wash.” Id. at col. 9, ll. 20-54; see also
App. Br. 9.
Claim 1 on appeal reads as follows and with emphasis added.
1. A process for controlling accumulation of catalyst solids
in a recovery train of an oxygenate to olefin process
comprising:
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

4
providing an effluent stream from an oxygenate to olefin
reaction, wherein the effluent stream comprises solid particles
and a gas phase containing prime olefins and having a dew
point;
removing heat from the effluent stream while
maintaining the effluent stream above the dew point of the gas
phase; and
washing the effluent stream at a temperature below the
dew point of the gas phase to remove the solid particles from
effluent stream into a wash medium.
Clm Appx., App. Br. 30.
5

EVIDENCE
The Examiner relies upon the following prior art references:
Jorgensen
Mulvaney
Kuechler
Miller
Lumgair
Warner
US 4,860,670
US 5,744,680
US 6,121,504
US 6,166,282
US 6,870,072 B2
EPO 0 063 195
Aug. 29, 1989
Apr. 28, 1998
Sep. 19, 2000
Dec. 26, 2000
Mar. 22, 2005
Oct. 27, 1982

The Examiner also relies on admitted prior art set forth in the
specification of the ’072 Patent and on a Declaration by John J.
Senetar dated June 18, 2010.

REJECTIONS
The Examiner makes the following rejections, all of which are before
us on appeal:
1. Claims 76-84 under 35 U.S.C. § 314(a) (2002)6 as enlarging the scope
of the claims of the reexamined ’072 Patent.

5
Throughout this decision, quotations of claims and claim limitations omit
bracketing and underlining wherever present for clarity.
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

5
2. Claims 76-84 under 35 U.S.C. § 112, ¶ 2 (1975), as indefinite.
3. Claims 1-11, 17-24, 26-43, 45-54, 56-58, 60-63, 66, 67, and 69-75
under 35 U.S.C. § 102(b) (2002) as anticipated by Kuechler.
4. Claims 1-43, 45-67, 69-75, 85-89, and 91-96 under 35 U.S.C. § 103(a)
(2004) as unpatentable over Kuechler.
5. Claims 1-67, 69-89, and 91-96 under 35 U.S.C. § 103(a) as
unpatentable over Kuechler and Miller.
6. Claims 1-43, 45-75, and 85-96 under 35 U.S.C. § 103(a) as
unpatentable over Mulvaney, Kuechler, and Jorgensen.
7. Claims 12-16, 44, 55, and 76-84 under 35 U.S.C. § 103(a) as
unpatentable over Mulvaney, Kuechler, Jorgensen, and Miller.

ANALYSIS
Rejection 1: Claims 76-84 rejected under 35 U.S.C. § 314(a)
Section 314(a) states “that no proposed amended or new claim
enlarging the scope of the claims of the patent shall be permitted” during
inter partes reexamination proceedings. 35 U.S.C. § 314(a) (2002).
The Examiner rejected new claims 76-84 as enlarging the scope of the
’072 Patent. RAN 9-10. The Patent Owner does not argue that these claims
do not enlarge the scope of the ’072 Patent. App. Br. 28. Rather, the Patent
Owner merely points out that it submitted amendments that it believes would
overcome the rejection that were not entered by the Examiner. App. Br. 28.

6
Section 314 as in effect on September 15, 2012 applies to inter partes
reexaminations such as this one that are requested before September 16,
2012. See Pub. L. No. 112-29, §§ 6(c)(3)(C).
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

6
Thus, we summarily affirm the Examiner’s rejection of claims 76-84 under
35 U.S.C. § 314(a).

Rejection 2: Claims 76-84 rejected under 35 U.S.C. § 112, ¶ 2
The Examiner rejected claims 76-84 as being indefinite in violation of
35 U.S.C. § 112, ¶ 2 (2002). RAN 10. The Patent Owner does not argue
that these claims are not indefinite. App. Br. 28. Rather, the Patent Owner
merely points out that it submitted amendments that it believes would
overcome the rejection that were not entered by the Examiner. App. Br. 28.
Thus, we summarily affirm the Examiner’s rejection of claims 76-84 under
35 U.S.C. § 112, ¶ 2.

Rejection 3: Claims 1-11, 17-24, 26-43, 45-54, 56-58, 60-63, 66, 67, and 69-
75 rejected under 35 U.S.C. 102(b) as anticipated by Kuechler
Patent Owner argues these claims as a group. App. Br. 8-15. In
accordance with 37 C.F.R. § 41.37(c)(1)(vii)(2008), we select independent
claim 1 as representative of the group. Therefore, we will treat claims 2-11,
17-24, 26-43, 45-54, 56-58, 60-63, 66, 67, and 69-75 as standing or falling
with representative claim 1.
7

Independent claim 1 is directed to “[a] process for controlling
accumulation of catalyst solids in a recovery train of an oxygenate to olefin

7
The Appeal Brief includes a section entitled “Separate Patentability of the
Dependent Claims” that provides brief arguments with respect to certain
claims, including claims 23, 24, 58, and 73-75 rejected as anticipated by
Kuechler. App. Br. 26. Because the arguments presented in that section are
not specific to any particular rejection, see App. Br. 26-27, we also address
these claims separately below.
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

7
process[.]” Kuechler disclose an OTO process. Kuechler col. 2, ll. 21-23.
The ’072 Patent itself characterizes Kuechler as follows:
One OTO system is illustrated in U.S. Pat. No. 6,121,504 (the
504 patent [i.e., Kuechler]). In the 504 patent, an oxygenate to
olefin reactor produces an effluent stream. The effluent stream
passes through heat exchangers for the efficient recovery of
heat. Then the effluent stream passes through a quench tower.

’072 Patent col. 2, ll. 10-15.
Kuechler further discloses that effluent stream (11) has a temperature
of 407.9º C before it reaches the quench tower, which “removes heat from
the product mixture, causing higher boiling components, such as water and
unreacted oxygenate feed, to condense and form a heavy product fraction.”
Kuechler col. 13, l. 42 (Table 2); col. 2, ll. 29-33 (emphasis added). The
Examiner found this disclosure as satisfying the step of “removing heat from
the effluent stream while maintaining the effluent stream above the dew
point of the gas phase” as required by claim 1. RAN 14-15.
Patent Owner argues against the anticipation rejection “because
Kuechler does not disclose or enable the feature of ‘removing heat from the
effluent stream while maintaining the effluent stream above the dew point of
the gas phase.’” App. Br. 8. We disagree for the following reasons.
Although Kuechler does not expressly mention the dew point as
pointed out by Patent Owner (App. Br. 10), Kuechler expressly discloses a
temperature for its effluent stream that is, in fact, above the dew point. More
specifically, in Example 1, effluent stream (11) has a temperature of
407.9º C at a pressure of 275.8 kPa. Kuechler col. 13, l. 42 (Table 2); see
also col. 9, ll. 62-64. Relying on declaration testimony of John J. Senetar,
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

8
Ph.D. submitted by Requester,
8
the Examiner found the disclosed
temperature to be well above the dew point of the gas phase of effluent
stream (11). RAN 12. In particular, Dr. Senetar testified that, under his
“direct supervision and control” and “using standard process design
software, i.e. AspenPlus version 2004.1 with Soave-Redlich-Kwong
equation of state with Kabadi-Danner modifications for water-hydrocarbon
systems,” the dew point of effluent stream (11) was calculated to be 120.1°C
-- 287.8º C below the disclosed temperature of the stream. Senetar Decl.
¶¶ 6-7.
Patent Owner argues that the dew point as calculated by Dr. Senetar
does not account for all variables, including the presence of the catalyst
fines, which can increase the dew point. App. Br. 12-13. However, Patent
Owner does not present persuasive evidence to support its position. For
example, Patent Owner does not present adequate evidence that such
variables would have affected the calculations made by Dr. Senetar, let alone
adequate evidence regarding the extent that such variables would have
affected the calculations made by Dr. Senetar. In short, Patent Owner does
not present adequate evidence that Dr. Senetar’s calculations were wrong.
Arguments of counsel cannot take the place of evidence lacking in the
record. Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir.
1997).

8
Requester submitted two declarations by John J. Senetar, one executed
June 18, 2010, and one executed June 29, 2011. Although we have
considered both declarations, this Decision refers to only the first declaration
executed June 18, 2010 (“Senetar Decl.”).
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

9
Patent Owner also states:
while Kuechler does disclose removing heat from the effluent
stream, and strictly speaking the temperature is above a
calculated dew point, Kuechler does not disclose doing so
“while maintaining the effluent stream above the dew point of
the gas phase” enough so that fouling does not occur.

App. Br. 10 (emphasis added). This argument is not persuasive, as it is not
commensurate with the scope of claim 1, which only requires that the
effluent stream is maintained above the dew point of the gas phase, without
specifying a minimum amount by which the effluent stream must be above
the dew point.
9

Patent Owner relies on Figure 1 of the ’072 Patent, which is a graph
of water condensation versus temperature for the effluent stream of a
methanol to olefin reaction at 280 kPa to argue that the effluent stream of
Kuechler is not completely in a gaseous form. App. Br. 11; ’072 Patent col.
3, ll. 49-51, col. 15, ll. 49-50. The graph shows water condensation
beginning when the temperature drops below 250º F
10
and then increasing
gradually to 100% condensation as the temperature drops to about 160º F.
Fig. 1. From this, Patent Owner argues that “[t]here is not a ‘bright line’
demarcation between the effluent being completely gaseous and being
completely condensed. . . . Hence, there is a need to bring the temperature

9
Additionally, we note that certain dependent claims do specify a minimum
amount by which the effluent stream must be above the dew point. For
example, claim 23 requires “a temperature of about 3º C or more above the
dew point[.]” Clm Appx., App. Br. 32. Kuechler meets this narrower
limitation, as it discloses a temperature that is 287.8ºC above the dew point.
10
According to the ’072 Patent, 250º F is about 120º C. Col. 16, ll. 2-3
(stating “250º F. (120º C.)”).
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

10
of the effluent stream high enough above the dew point to avoid such
condensation.” App. Br. 11.
We are not persuaded by Patent Owner’s arguments. The effluent
stream (11) of Kuechler is 407.9º C -- well above both the 120.1°C dew
point calculated by Dr. Senetar and the 250º F (~120º C) dew point shown in
Figure 1 of the ’072 Patent. Further, the ’072 Patent states that “the
condensation of water is prevented by keeping the temperature of the
effluent stream above about 250º F. (120º C.) while it is being conveyed to a
quench device.” Col. 16, ll. 1-3; see also RAN 59. The effluent stream in
Kuechler is above this temperature. Kuechler col. 13, l. 42 (Table 2), col. 9,
ll. 62-64.
Patent Owner argues that “one skilled in the art would have to assume
that the effluent in the heat exchanger (8) and stream (12) of Kuechler must
at least partially condense.” App. Br. 10 (bold and underlining added).
11

But, effluent stream (12) has a temperature of 124.9º C, Kuechler col. 13, l.
43, and Requester presented credible evidence that the dew point of effluent

11
Kuechler disclose an embodiment in which a first effluent stream (11) has
a temperature of 407.9º C and is fed through a heat exchanger (8), resulting
in a second effluent stream (12), which has a temperature of 124.9º C and is
sent to quench tower (13). Kuechler col. 9, ll. 59-61; col. 13, ll. 42-43. As
pointed out by the Examiner, however, not all embodiments of Kuechler
require effluent stream (11) to be cooled to form effluent stream (12). RAN
37. Kuechler states that, alternatively, “oxygenate conversion product
effluent 11 is sent directly to quench tower 13 without intermediate
cooling.” Col. 9, ll. 62-64.
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

11
stream (12) is 118.5º C. Senetar Decl. ¶ 7.
12
Thus, effluent stream (12) is
also above its respective dew point.
Patent Owner also urges us to rely on a declaration of its witness,
Thomas H. Colle, Ph.D., instead of the declaration of Dr. Senetar submitted
by Requester, stating:
The only thing that Dr. Senetar opines on with respect to
dew point is to calculate the dew point of the effluent stream in
the Kuechler patent example. Dr. Senetar makes no comment
with respect to whether or not the dew point was of any
significance with respect to the oxygenation process. The
Senetar declaration does not support the Requester's or the
Examiner's theory as to why the Kuechler patent inherently
teaches the processes claimed in the '072 patent. . . .
On the other hand, Dr. Colle, Patentee's expert,
specifically opines on whether or not the Kuechler patent would
be understood by the ordinary artisan to contain an enabling
disclosure with respect to the importance of dew point vis a vis
catalyst fine fouling. Dr. Colle concludes that there is no
mention of such a concept in the Kuechler patent.

App. Br. 12. These arguments are not persuasive. Anticipation requires the
disclosure of all elements of a claim as arranged in the claim. SynQor, Inc.
v. Artesyn Tech., Inc., 709 F.3d 1365, 1375 (Fed. Cir. 2013). Kuechler does
this regardless of whether the Kuechler inventors recognized that practicing
their disclosure would prevent or reduce fouling. “Inherency is not
necessarily coterminous with the knowledge of those of ordinary skill in the
art. Artisans of ordinary skill may not recognize the inherent characteristics

12
Patent Owner has not presented evidence of its own calculation of the dew
point of effluent stream (12).
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

12
or functioning of the prior art.” MEHL/Biophile Int’l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999).
For the foregoing reasons, we sustain the rejection of claims 1-11, 17-
24, 26-43, 45-54, 56-58, 60-63, 66, 67, and 69-75 as anticipated by
Kuechler.

Rejection 4: Claims 1-43, 45-67, 69-75, 85-89, and 91-96 rejected under 35
U.S.C. 103(a) as unpatentable over Kuechler
Since we sustain the rejection of claims 1-11, 17-24, 26-43, 45-54, 56-
58, 60-63, 66, 67, and 69-75 as anticipated by Kuechler, we also sustain
their rejection as unpatentable over Kuechler. See Structural Rubber Prods.
Co. v. Park Rubber Co., 749 F.2d 707, 716 (Fed. Cir. 1984) (“a disclosure
that anticipates under § 102 also renders the claim invalid under § 103, for
‘anticipation is the epitome of obviousness’”) (quoting In re Fracalossi, 681
F.2d 792, 794 (CCPA 1982)).
The additional claims rejected as unpatentable over Kuechler are
claims 12-16, 25, 55, 59, 64, 65, 85-89, and 91-96.
Patent Owner does not present any arguments with respect to claims
12-16, 25, 55, 59, 64, and 65 beyond the unpersuasive arguments regarding
the independent claims from which they depend. App. Br. 15-19.
Accordingly, we also sustain the rejection of claims 12-16, 25, 55, 59, 64,
and 65 as unpatentable over Kuechler.
Patent Owner asserts patentability of independent claim 85, stating
that “[t]he feature of claim 85 ‘wherein the temperature of the cooled
effluent stream is maintained at a temperature of about 10° C or more above
the dew point prior to the step of washing’ is clearly not disclosed or
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

13
suggested in Kuechler.” App. Br. 17. We disagree. Claim 85 recites
“contacting the effluent stream with a liquid at a temperature below the dew
point of the gas phase, wherein the temperature of the cooled effluent stream
is maintained at a temperature of about 10° C or more above the dew point
prior to the step of contacting[.]” Clm Appx., App. Br. 40. As already
established above, effluent stream (11), which has a temperature of 407.9º C,
is more than 10° C above the dew point when it enters quench tower (13) in
the embodiment disclosed by Kuechler at column 9, lines 62-64.
Accordingly, we sustain the rejection of claim 85, as well as the rejection of
claims 86-89 and 91-96 that depend therefrom, as unpatentable over
Kuechler.

Rejection 5: Claims 1-67, 69-89, and 91-96 rejected under 35 U.S.C. 103(a)
as unpatentable over Kuechler and Miller
Patent Owner does not present any arguments with respect to any of
the rejected claims beyond the unpersuasive arguments regarding the
independent claims from which they depend. App. Br. 19 (“Patentee
traverses this rejection for the same reasons as stated above with respect to
Kuechler . . . what is still not disclosed is the step: ‘removing heat from the
effluent stream while maintaining the effluent stream above the dew point of
the gas phase.’”) Accordingly, we sustain the rejection of claims 1-67, 69-
89, and 91-96 as unpatentable over Kuechler and Miller.

Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

14
Rejection 6: Claims 1-43, 45-75, and 85-96 rejected under 35 U.S.C. 103(a)
as unpatentable over Mulvaney, Kuechler, and Jorgensen
The Examiner relies on Mulvaney as teaching the subject matter of
claim 1 except for maintaining the effluent stream temperature above the
dew point prior to washing. RAN 28-29. The Examiner relies on both
Kuechler and Jorgensen as teaching this additional limitation. RAN 29.
Jorgensen relates to a method and apparatus for the cleaning of flue
gas from the combustion of fuels, and the recovery of heat from the flue gas,
whereby the flue is conducted from a boiler through a heat exchanger.
Jorgensen col. 1, ll. 7-11. The Examiner found that Jorgensen teaches that
when the smoke is cooled down considerably by using a heat exchanger, the
temperature of the flue gas drops below the dew point of acid in the gas,
which condenses and causes problems. RAN 29 (citing Jorgensen col 1, ll.
34-38). In particular, Jorgensen teaches “the particles in the flue gas become
chalky and, in connection with the acid, thus form a gypsum paste which
quickly blocks the heat exchanger.” Jorgensen col. 1, ll. 43-45. The
Examiner further found that Jorgensen discloses a solution to the problem by
cooling the flue gas only to a point such that it remains above the dew point.
RAN 29 (citing Jorgensen col. 2, ll. 3-20).
The Examiner concluded that it would have been obvious to perform
Mulvaney’s OTO process with the effluent stream above the dew point prior
to washing because (1) it is conventional to do so in an OTO process as
taught by Kuechler and (2) to prevent deleterious deposits as taught by
Jorgensen. RAN 29-30.
With respect to Kuechler, Patent Owner argues that the stated
rationale for combing it with Mulvaney is insufficient since Kuechler does
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

15
not provide any significance to the temperature of its effluent streams. App.
Br. 20. We agree with Patent Owner, and note that the Examiner does not
provide evidentiary support for the assertion that the temperature employed
in Kuechler is conventional for an OTO process.
With respect to Jorgensen, Patent Owner argues that one of ordinary
skill in the art would not look to it because it is “directed to a method for
cleaning and desulfurizing flue gas from a combustion boiler.” App. Br. 21.
We disagree. As stated by the Examiner, “Jorgensen teaches the basic,
well known principle that keeping an effluent stream above its dew point
will prevent deposits in the effluent line[.]” RAN 29; see also In re Clay,
966 F.2d 656, 659 (Fed. Cir. 1992) (“A reference is reasonably pertinent if,
even though it may be in a different field from that of the inventor’s
endeavor, 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.”).
Although Patent Owner persuades us that the stated rationale for
combining Mulvaney and Kuechler is insufficient, it has failed to persuade
us that the claims are patentable over Mulvaney and Jorgensen. The Board
may rely on less than all of the references applied by the Examiner in an
obviousness rationale without designating it as a new ground of rejection. In
re Bush, 296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458
n.2 (CCPA 1966). Indeed, the Examiner presented two different rationales
for combining the references, and one of these rationales is sufficient to
establish obviousness of the claimed subject matter. Accordingly, we
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

16
sustain the rejection of claims 1-43, 45-75, and 85-96 over Mulvaney,
Kuechler, and Jorgensen.

Rejection 7: Claims 12-16, 44, 55, and 76-84 rejected under 35 U.S.C.
103(a) as unpatentable over Mulvaney, Kuechler, Jorgensen, and Miller
Patent Owner presents the same arguments with respect to this
rejection as it does for the rejection of claims 1-43, 45-75, and 85-96 as
unpatentable over Mulvaney, Kuechler, and Jorgensen. Compare App. Br.
19-22 with App. Br. 23-26. Accordingly, we sustain the rejection of claims
12-16, 44, 55, and 76-84 as unpatentable over Mulvaney, Kuechler,
Jorgensen, and Miller.

Patent Owner’s “Separate Patentability of the Dependent Claims” Section
This section of the Appeal Brief provides brief arguments with respect
to specific claims or groups of claims but does so divorced from any specific
rejection(s). App. Br. 26-27. As explained below, none of these arguments
– several of which are repeat arguments that have already been considered
and addressed above – changes our analysis above.
a) Claims 23, 24, 25, 58, 59, 73, 74, 75, 78, 79, 80, 81 and 83
Patent Owner argues that “these claims require that the effluent stream
temperature be maintained at 3°C, 5.5°C or 10ºC above the dew point prior
to the step of washing” and that “neither Kuechler or Mulvaney nor any of
the secondary citations either teach or suggest this particular process
parameter.” App. Br. 26.
We are not persuaded by Patent Owner. See pages 12-13 supra. In
Kuechler, effluent stream (11) is at a temperature of 407.9º C (Kuechler col.
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

17
13, l. 42), which is 287.8º C above the 120.1° C dew point that was
calculated by Dr. Senetar. Senetar Decl. ¶ 7.
b) Claim 45
Patent Owner argues that claim 45 “requires that none of the
components of the effluent stream are condensed into liquid form prior to
the solids wash” and that “there is no disclosure of this particular element in
Kuechler or Mulvaney or in any of the secondary references relied upon by
the Examiner.” App. Br. 26.
We are not persuaded by Patent Owner. Because the effluent stream
(11) in Kuechler is above the dew point – indeed, 287.8º C above the dew
point – prior to the solids wash, it is inherent that none of the components of
the effluent stream (11) would be condensed into liquid form prior to the
solids wash. See Resp. Br. 13; see also RAN 15. Further, we note that
independent claim 46 recites the same limitation (i.e., that “none of the
components in the effluent stream are condensed to form a liquid in any
elements in a recovery train prior to the gaseous effluent stream reaching the
solids wash”) while only requiring “a temperature of about 3º C or more
above the dew point[.]” Clm Appx., App. Br. 35.
c) Claims 64-68
Patent Owner argues the following:
Claims 64-68 relate to the control of the effluent stream
temperature decrease through a conduit from the reactor to the
heat exchanger within a particular temperature range. Patentees
submit that neither Kuechler nor Mulvaney includes any
disclosure which would direct the ordinary artisan to control the
conduit temperature in an effort to control or prevent catalyst
fine fouling in an OTO process.
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

18

App. Br. 26. This argument does not apprise us of any error. Claims 64-68
do not require controlling the conduit temperature in an effort to control or
prevent catalyst fine fouling in an OTO process. As discussed above, the
prior art discloses or renders obvious the temperature ranges disclosed in
these claims.
d) Claims 69-72
Patent Owner argues the following:
Claims 69-72 require that the solids wash be introduced
into a solids wash device below its bubble point temperature.
Patentees submit that neither Kuechler nor Mulvaney nor any of
the secondary references have any disclosure relating to control
of bubble point temperature when an effluent stream is
introduced into a solids wash device.

App. Br. 26-27.
The Examiner found that Kuechler teaches the above-referenced
limitations of these claims because “stream (15), which eventually becomes
stream (20) after cooling in exchanger (19), is maintained at no less than
about 25°C below the bubble point of byproduct water in the stream[.]”
RAN 20 (citing col. 10, ll. 44-52 and Fig. 1); see also Kuechler col. 12, ll.
47-52. Indeed, Kuechler states “[p]referably, the exiting temperature of
heavy product fraction stream 15 is maintained at no less than about 25° C.
below the bubble point of byproduct water in stream 15.” Col. 10, ll. 47-49.
Thus, we are not persuaded by Patent Owner’s argument.
e) Claims 77, 82-84, and 87-96
Patent Owner argues the following:
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

19
Claims 77, 82-84 and 87-96 relate to the control of
conduit temperatures within a particular range with respect to
the effluent stream dew point temperature.
Patentees submit that neither Kuechler nor Mulvaney nor
any of the secondary references provide any relevant disclosure
from which the ordinary artisan would understand that such a
temperature control is needed or that such temperature control
could reduce or prevent catalyst fine fouling in an oxygenate to
olefin process. There is no disclosure in any of the cited
references from which the ordinary artisan would be led to such
temperature control with the reasonable expectation of
achieving control or prevent of catalyst fine fouling.

App. Br. 27. This argument does not apprise us of any error.
Claim 77, for example, requires that “the temperature decrease in the
conduit from the exit of the heat exchanger to the solids wash is no greater
than about 11°C while still being maintained above the dew point of the
effluent stream prior to entering the solids wash.” Clm Appx., App. Br. 39.
The Examiner concluded that it would have been obvious to one of ordinary
skill in the art to “minimize[] any heat loss from the conduits” (i.e., the
conduits containing effluent streams (11) and (12)) “because Kuechler
clearly suggests feeding non-condensed (vapor) effluent to the quench
tower[.]” RAN 24; see also Kuechler col. 2, ll. 29-33. We find that the
stated reasoning provides rational underpinning to support the legal
conclusion of obviousness. The Patent Owner has not adequately explained
why the Examiner’s conclusion of obviousness is purportedly erroneous.

DECISION
The rejection of claims 76-84 under 35 U.S.C. § 314(a) (2002) as
enlarging the scope of the reexamined ’072 Patent is affirmed.
Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

20
The rejection of claims 76-84 under 35 U.S.C. § 112, ¶ 2 (1975) as
indefinite is affirmed.
The rejection of claims 1-11, 17-24, 26-43, 45-54, 56-58, 60-63, 66,
67, and 69-75 under 35 U.S.C. § 102(b)(2002) as anticipated by Kuechler is
affirmed.
The rejection of claims 1-43, 45-67, 69-75, 85-89, and 91-96 under 35
U.S.C. § 103(a) (2004) as being unpatentable over Kuechler is affirmed.
The rejection of claims 1-67, 69-89, and 91-96 under 35 U.S.C. §
103(a) as unpatentable over Kuechler and Miller is affirmed.
The rejection of claims 1-43, 45-75, and 85-96 under 35 U.S.C. §
103(a) as being unpatentable over Mulvaney, Kuechler, and Jorgensen is
affirmed.
The rejection of claims 12-16, 44, 55, and 76-84 under 35 U.S.C. §
103(a) as unpatentable over Mulvaney, Kuechler, Jorgensen, and Miller is
affirmed.

Requests for extension of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED
ack

Appeal 2012-011935
Reexamination Control No. 95/001,387
Patent 6,870,072 B2

21
PATENT OWNER:

EXXONMOBIL CHEMICAL COMPANY
5200 BAYWAY DRIVE
P.O. BOX 2149
BAYTOWN, TX 77522-2149

THIRD PARTY REQUESTER:

BANNER & WITCOFF, LTD
1100 13TH STREET, NW
SUITE 1200
WASHINGTON, DC 20005-4051