Ex parte ADORNATO et al.

Board of Patent Appeals and Interferences

Apr 2, 1998

07877913 (B.P.A.I. Apr. 2, 1998)

Application for patent filed May 4, 1992.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PETER M. ADORNATO,
AMOS A. AVIDAN
and DAVID L. JOHNSON
_____________
Appeal No. 96-0112
Application 07/877,9131
______________
ON BRIEF
_______________
Before METZ, PAK and WALTZ, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final rejection of claims 1 through 20, which
Appeal No. 96-0112
Application 07/877,913
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are all of the claims pending in the application.
Claim 1 is representative of the subject matter on appeal and reads as follows:
1. In a catalytic cracking process wherein a feed comprising non-distillable hydrocarbons is
catalytically cracked in a riser reaction zone, operating at riser cracking conditions, including a riser
vapor residence time, by contact with a source of hot, regenerated cracking catalyst to produce
catalytically cracked vapors and spent cracking catalyst, cracked vapors are withdrawn as products,
and spent cracking catalyst is regenerated in a catalyst regeneration means to produce hot regenerated
cracking catalyst which is recycled to contact said feed, the improvement comprising:
cracking in the base of a vertical riser reactor having a length, for at least 1 second of vapor
residence time and for at least the first 50 % of the length of the riser reactor from the base, a heavy
feed containing at least 10 wt% non-distillable hydrocarbons by contact with hot regenerated cracking
catalyst at a cat:feed weight ratio of a least 4:1 and wherein the amount and temperature of the hot
regenerated catalyst are sufficient to produce a catalyst/feed mixture temperature sufficient to promote
both catalytic cracking and undesired thermal cracking of said feed in said riser; and
quenching, after at least 1.5 seconds of vapor residence time, said catalyst mixture in a quench
zone within said riser within the first 80% of the length of the riser reactor from the base, [sic, with] an
inert quench fluid in an amount sufficient to quench the temperature in the riser at least 5 F. o
The sole reference relied on by the examiner is:
Owen 5,073,249 Dec. 17, 1991
(Filed Nov. 21, 1989)
The appealed claims stand rejected under 35 U.S.C. § 103 as unpatentable over the disclosure
of Owen.
We have carefully reviewed the entire record before us, including all of the arguments advanced
by appellants and the examiner in support of their respective positions. This review leads us to
conclude that only the examiner’s § 103 rejection of claims 1 through 7, 9 through 15 and 18 is well-
Appeal No. 96-0112
Application 07/877,913
Claim 18, unlike claims 8, 16, 17, 19 and 20, is not directed to using a particular quenching2
fluid injection for producing the aspirating or educting effect within a riser reactor, which is responsible
for reducing pressure at the base of the riser reactor. Note also that the mere reiteration of limitations
of claims 4 through 6 does not constitute a substantive separate argument that complies with the
requirements of 37 CFR § 1.192(c)(5)(1993); now 37 CFR
§ 1.192(c)(7)(1997).
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founded. Accordingly, we will sustain the examiner’s § 103 rejection of claims 1 through 7, 9 through
15 and 18, but reverse the examiner’s § 103 rejection of claims 8, 16, 17, 19 and 20. Our reasons for
this determination follow.
As a preliminary matter, we note that appellants state that “[t]he claims do not stand or fall
together.” See Brief, page 3. However, appellants argue separately only appealed claims 8, 16, 17,
19 and 20 with a reasonable degree of specificity . See Brief, pages 3, 5 and 6. Accordingly, we have2
grouped the appealed claims as follows:
Group I - claims 1 through 7, 9 through 15 and 18; and
Group II - claims 8, 16, 17, 19 and 20.
The appealed claims in each group will stand or fall together with the broadest claim therein. See 37
CFR 1.192(c)(5) (1993); now 37 CFR 1.192(c)(7)(1997); In re Nielson, 816 F.2d 1567, 1572, 2
USPQ2d 1525, 1528 (Fed. Cir. 1987).
The claimed subject matter is directed to a catalytic cracking process for a hydrocarbon
feedstock containing non-distillable hydrocarbons. See, e.g., claim 1. The catalytic cracking process
involves cracking the hydrocarbon feedstock at particular reaction conditions in a riser reactor and
Appeal No. 96-0112
Application 07/877,913
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quenching the resultant product in the riser reactor at an area located in about 50% to 80% of the riser
reactor length from the base of the riser reactor, which is equivalent to at least 1.5 seconds of vapor
residence time in the riser reactor. See, e.g., claim 1 in conjunction with the specification, page 10.
The examiner has rejected claims 1 through 20 under 35 U.S.C. § 103 as unpatentable over
the disclosure of Owen. Appellants do not contest that Owen discloses the claimed catalytic cracking
conditions, including the claimed hydrocarbon feedstock. Appellants only argue that:
1) The disclosure of Owen would not have rendered quenching at the particular location of
a riser reactor as recited in claim 1 prima facie obvious to one of ordinary skill in the art within the
meaning of 35 U.S.C. § 103 (see Brief, page 4);
2) The prima facie case of obviousness established by the examiner is rebutted by showing
that quenching at the particular location of a riser reactor as recited in claim 1 imparts unexpected
results (see Brief, page 5); and
3) The disclosure of Owen would not have rendered the injection of a quenching fluid in a
manner recited in claims 8, 16, 17, 19 and 20 to produce the aspirating or educting effect within a riser
reactor prima facie obvious to one of ordinary skill in the art within the meaning of 35 U.S.C. § 103
(see Brief, pages 5 and 6).
We agree with the examiner that the Owen reference would have rendered quenching at the
claimed location of a riser reactor prima facie obvious to one of ordinary skill in the art. As indicated
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Application 07/877,913
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by the examiner at page 3 of the Answer, Owen discloses (column 3, lines 42-45) that:
In many FCC units better feed vaporization is achieved by using a higher
temperature in the base of the riser reactor, and quenching the middle of the riser or the
riser outlet.
In contrast to appellants’ argument, this statement is more than mere “dicta”. It specifically teaches that
employing a higher temperature in the base of a riser reactor followed by quenching at the middle of the
riser reactor (50 % of the riser reactor length from the base of the riser reactor) enhances feed
vaporization in many fluidized catalytic cracking processes. Inasmuch as this approach is one of the
known methods for improving a catalytic cracking process, a person having ordinary skill in the art
would have been led to employ a higher temperature in the base of a riser reactor, together with
quenching at the middle of the riser reactor, with a reasonable expectation of improving hydrocarbon
feed vaporization in a catalytic cracking process. This is especially true in this situation since the
quenching location is a function of a desired reaction residence time (desired cracking time), i.e., a
function of the desired product (products cracked to a desired level).
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Application 07/877,913
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According to appellants at page 5 of the Brief, Figure 2 generated by a computer program
shows that the claimed subject matter imparts unexpected results over that of the closest prior art. To
support their position, appellants refer to an affidavit filed under 37 CFR § 1.132 by Mr. Adornato,
one of the inventors in the instant application (hereinafter referred to as “the Adornato affidavit”).
Having carefully reviewed the specification examples, Figure 2 and the Adornato affidavit, we find
ourselves in full agreement with the examiner that appellants have not satisfied their burden of
establishing that the claimed subject matter as a whole imparts unexpected results.
First, it is not enough for appellants to show that the results predicted through a computer
program for appellants’ invention and the comparative examples are different. Appellants have the
burden of showing that the differences are significant and unexpected. See In re Freeman, 474 F.2d
1318, 1324, 177 USPQ 139, 143 (CCPA 1973) (the burden of showing unexpected results rests on
appellants who rely on them); In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (CCPA
1971) (the difference in results must be significant and of practical advantage). This appellants have not
done. The significance of the predicted results, for instance, cannot be determined since appellants do
not indicate the margin of error applicable to the prediction based
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Application 07/877,913
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on the computer program. The predicted results are also not shown to be unexpected since they are
said to be expected from “our understanding of chemistry involved”. See page 2 of the Adornato
affidavit. There is nothing in the record to conclude that the results predicted are derived from reaction
variables or program models, which are not known to or not expected by one of ordinary skill in the art
to affect the desired level of cracking. Indeed, neither the specification nor the Adornato affidavit states
that this difference is “unexpected”. See In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365
(Fed. Cir. 1997).
Second, the showing in Figure 2, as explained in the Adornato affidavit and pages 16 and 17 of
the specification, is not reasonably commensurate in scope with the degree of protection sought by
appealed claim 1. See In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983); In
re Clemens, 622 F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980). While the showing in Figure
2 is based on the specific cracking conditions (e.g., specific catalyst and temperature known to affect
cracking), specific size (length and width) of a riser reactor, specific residence time, specific quenching
temperature and specific hydrocarbon feedstock described in page 16 of the specification, appealed
claim 1 is not so limited. In spite of the fact that these reaction variables are known to affect the types
of the product obtained, see, e.g., Owen, columns
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Application 07/877,913
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1 through 7, appellants have not offered any evidence or any sound scientific reasoning to conclude
that the predicted results based on limited specific reaction variables can reasonably be extrapolated to
support the plethora of reactions conditions, including multifarious feedstocks, covered by the appealed
claim.
Thus, having considered all of the evidence of record, we determine that the evidence of
obviousness regarding the subject matter defined by claims 1 through 7, 9 through 15 and 18, on
balance, outweighs the evidence of nonobviousness. Hence, we agree with the examiner that the
subject matter defined by claims 1 through 7, 9 through 15 and 18 would have been obvious to one of
ordinary skill in the art. Accordingly, we affirm the examiner’s decision to reject claims 1 through 7, 9
through 15 and 18 under 35 U.S.C. § 103.
The rejection of claims 8, 16, 17, 19 and 20 under 35 U.S.C. § 103 over the disclosure of
Owen, however, is on a different footing. Claims 8, 17, 19 and 20 require injection of a quenching fluid
at a velocity of at least 200 feet per second in a downstream direction relative to fluid flow in the riser
reactor. According to page 20, lines 10-23, of the specification, injecting the quenching fluid in this
manner provides some eduction effect. Claim 16 also requires injecting a quenching fluid in such a
manner to reduce the pressure at the base and upstream of the quench point by at least 0.5 psia
(educting effect). Further, claims 8 and 20 specifically require occurrence of either the educting or
aspirating effect. Nowhere does Owen, however, describe the claimed injection technique or the
Appeal No. 96-0112
Application 07/877,913
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desire for obtaining the educting or aspirating effect. The examiner does not provide any evidence or
scientific reasoning to indicate that the claimed injection technique would have been suggested to one of
ordinary skill in the art. Accordingly, we reverse the examiner’s decision to reject claims 8, 16, 17, 19
and 20 under 35 U.S.C. § 103.
In summary:
(1) The rejection of claims 1 through 7, 9 through 15 and 18 under 35 U.S.C. § 103 over
the disclosure of Owen is affirmed; and
(2) The rejection of claims 8, 16, 17, 19 and 20 under 35 U.S.C. § 103 over the
disclosure of Owen is reversed.
The decision of the examiner is affirmed-in-part.
OTHER ISSUES
While we have reversed the examiner's stated rejection of claims 8, 16, 17, 19 and 20, both the
examiner and appellants should carefully consider the following issues before the claims we have
reversed are allowed to issue.
In the first instance, in ¶3. of Mr. Adornato's declaration he states:
The model, e.g., response of the FCC riser reactor to quench at different elevations
in the riser is believed reliable because it predicts results which are consistent with three
commercial FCC units. Thus, it is a proven, commercially used tool.
The tenor of this statement could have two possible meanings. The paragraph could be construed to
Appeal No. 96-0112
Application 07/877,913
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mean that the program used to simulate the claimed FCC process has been used to simulate other FCC
processes which other FCC processes were subsequently actually run and which actual runs confirmed
the computer's prediction and are now in use in three commercial FCC units. The paragraph could also
be construed to mean that the program used to simulate the claimed FCC process was actually tested
by actually running an FCC process according to the program and the actual testing confirmed the
program's predictions and the claimed FCC process is now in use in three commercial FCC units. If
the latter is intended then a question arises under 35 U.S.C .§ 102 whether or not the claimed invention
was "known or used by others... in this country or a foreign country before the invention thereof by
applicant for patent" (35 USC 102(a)) or whether the invention was "in public use or on sale in this
country, more than one year prior to the date of application for patent in the United States" (35 USC
102(b)). Accordingly, applicants should file a clear statement of what was intended. If the former was
intended then applicants should also positively state to the best of their knowledge and belief that the
claimed FCC process was not in public use or on sale more than one year prior to the filing of their
application nor was it known or used by others before the filing date of their application for patent.
Secondly, throughout their disclosure, appellants speak of optimizing the various reaction
parameters by using the computer program referenced in the Adornato declaration. However, as we
stated in our opinion, Owen clearly suggests that the various reaction parameters which appellants
optimize are known in the art to affect the product obtained. Thus, the variables can be said to be
Appeal No. 96-0112
Application 07/877,913
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"result effective variables". It has been consistently held that the optimization of result effective variables
is entirely within the skill of the ordinary routineer in the art. In re Boesch, 617 F.2d 272, 205 USPQ
215 (CCPA 1980). Moreover, there is evidence in the nature of U.S. Patent Number 4,419,221 to
Castagnos, Jr., et al. and an article by Hatch et al. (1981) (copies attached to this opinion) which
further underscores that the variables which appellants' have optimized by their computer simulation are
known to effect the product obtained, the yield and the distribution.
Specifically, Castagnos, Jr., et al. discloses a method for controlling a fluidized catalytic
cracking process to obtain a desired product distribution (column 1, lines 5 through 8). A hydrocarbon
feedstock is contacted with a catalyst in a reaction zone under conditions to convert the feedstock into
1) desired products and 2) coke on the surface of the catalyst particles (column 1,lines 15 through 22).
The reaction products and the spent catalyst are discharged to a separation zone where the catalyst and
reaction products are separated (column 1, lines 25 through 28). Yield of the desired products may be
controlled by selecting various reaction parameters such as the charge stock, the catalyst, the
temperature, the pressure, the catalyst-to-oil contact time, the catalyst-to-oil ratio, etcetera (column 1,
lines 56 through 61, emphasis added).
Appeal No. 96-0112
Application 07/877,913
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Hatch et al. (1981) at page 24 thereof describe under the heading "Catalytic Cracking" that:
Fluid catalytic cracking (FCC) is characterized by a remarkable versatility and
flexibility. Various yields are maximized through manipulation of numerous
process variables. This accounts for its dominant position to gasoline production
from a barrel of crude oil. (Emphasis added).
Thus, there is little doubt that the skilled chemical engineer with substantial petroleum refining
experience would have understood that gasoline yields of an FCC process could be optimized by
optimization of known result effective variables.
Still further, there is evidence in the nature of U.S. Patent Number 4,978,440 to Krambeck et
al. that the location of steam injectors for quenching is a matter of choice known to persons of ordinary
skill in the petroleum refining art, including at or towards the top of the riser. See specifically column 5,
line 65 through column 6, line 61 and column 9, line 63 through column 10, line 8. Because Krambeck
et al. is assigned to Mobil Oil Corporation, the assignee of appellants' application on appeal, we have
not furnished a copy of the reference to appellants with this decision.
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Application 07/877,913
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Additionally, at page 18, lines 35 through 39 of appellants' disclosure, it is recited that the steam
injectors utilized in claims 8, 16, 17, 19 and 20 are "commonly used in refineries and extensively
discussed in Perry's Engineer's Handbook, Sixth Edition, Sections 6-31 to 6-35 of which are
incorporated by reference."
Thus, from all the above, it could be considered that all the facets of appellants' claimed
invention are either result effective variables whose optimization would have been within the skill of the
routineer in the art, or are well-known expedients in the refining art and are being used for their art-
accepted purpose to achieve an expected result-optimization of a particular product or yield. Thus, a
question of obviousness under 35 USC 103 may be engendered when the above-noted prior art is
considered together. It is also possible that only through appellants' manipulation of variables and
application of the totality of these well known expedients that the claimed invention was achieved. On
this record, as now developed, we shall not conjecture on this issue but find the better course of action
is to leave the resolution of these issues to the appellants and the examiner upon return of this
application to the examining group.
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Application 07/877,913
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No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR 1.136(a).
AFFIRMED-IN-PART
ANDREW H. METZ )
Administrative Patent Judge )
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 96-0112
Application 07/877,913
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CHARLES J. SPECIALE
MOBIL OIL CORP.
OFFICE OF PATENT COUNSEL
3225 GALLOWS RD.
FAIRFAX, VA 22037