Ex Parte Gloeckle et al

Board of Patent Appeals and Interferences

May 15, 2009

10725858 (B.P.A.I. May. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARKUS GLOECKLE and MARKUS HERNIER
____________

Appeal 2009-2983
Application 10/725,858
Technology Center 1700
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Decided:1 May 18, 2009
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
KAREN M. HASTINGS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-7. We have
jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-2983
Application 10/725,858

Claim 1 is illustrative:
1. A method for supplying a fuel, comprising:

splitting-up the fuel at a separation device into a first fuel fraction in
the form of a retentate and into a second fuel fraction in the form of a
permeate that is aromatics-enriched; and

acting upon the separation device by a scavenging gas on a permeate
side, so that a mixture of a fuel permeate and the scavenging gas is
produced.

The Examiner relies upon the following references in the rejection of
the appealed claims (Ans. 3):
Waycuilis 5,149,340 Sep. 22, 1992
Ueda 2002/0139111 A1 Oct. 03, 2002
Partridge 6,972,093 B2 Dec. 06, 2005

Appellants’ claimed invention is directed to a method for supplying a
fuel which entails splitting-up the fuel at a separation device into first and
second fuel fractions in the form of a retentate and permeate, respectively.
The permeate is aromatics-enriched. A scavenging gas acts upon the
separation device to produce a mixture of the fuel permeate and scavenging
gas.
Appealed claims 1-4 and 6 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Waycuilis. Claims 1-7 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Partridge. Claims 1-7 also stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Ueda in view of
Waycuilis.
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Application 10/725,858

Appellants do not present separate arguments for any particular claim
on appeal. Accordingly, the separately rejected groups of claims stand or
fall together.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we find that the Examiner’s
§ 102 rejection over Waycuilis is not well founded. However, we will
sustain the Examiner’s other two rejections for essentially those reasons
expressed in the Answer. Our reasoning follows.
We consider first the § 102 rejection over Waycuilis. The appealed
claims define a method wherein a separation device separates a fuel into an
aromatics-enriched permeate. Although Waycuilis is directed to a
separation device which separates hydrocarbons, the Examiner
acknowledges that Waycuilis provides no disclosure that the retentate
produced by the separation device is aromatics-enriched, as presently
claimed. Without such a teaching, we agree with Appellants that Waycuilis
does not describe every feature of the claimed invention and, therefore, does
not describe the claimed invention within the meaning of §102. The
Examiner’s statement that “the reference teaches the generic process of
removing impurities from hydrocarbons” (Ans. 4, last para.) falls far short of
describing the claimed step of producing a retentate that is aromatics-
enriched. Also, the Examiner’s finding that “[t]he apparatus of the reference
is inherently capable of performing the separation claimed” (Ans. 5,
penultimate para.) is irrelevant to the claimed invention which defines a
method, not an apparatus.
We now turn to the Examiner’s rejection of all the appealed claims
under § 102 over Partridge. Partridge, like Appellants, describes a method
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Application 10/725,858

of using a separation device to separate an aromatics-enriched retentate from
a fuel. Appellants also do not dispute the Examiner’s factual determination
that Partridge recirculates an air-containing vapor to the permeate side of the
membrane which acts as a scavenging gas. It is Appellants’ contention that
the liquid fuel components of Partridge effuse to the permeate side of the
membrane and cover the membrane surface such that the recirculating gas
“would not act upon the membrane, which is inaccessible to the gas due to
the liquid layer of fuel components” (Br. 5, fourth para.). Appellants
maintain, therefore, that Partridge does not describe the claimed step of
having a scavenging gas act upon the separation device.
We are not persuaded by Appellants’ argument since Partridge
provides no disclosure that liquid fuel on the permeate side of the membrane
entirely covers the membrane surface such that the recirculating gas is
totally prevented from contacting the membrane surface. As acknowledged
by Appellants, Partridge maintains a pressure on the permeate side of the
membrane that is lower than the vapor pressure of the effused aromatics
such that they are continuously removed from the surface as a fuel vapor.
Hence, the immediate vaporization of the fuel would enable some of the
recirculating gas to contact the surface membrane. Also, Appellants have
not rebutted the Examiner’s finding that the pervaporation of Partridge “is a
process in which the permeating material permeates through the membrane
in the vapor phase due to the partial pressure difference between the feed
side and the permeate side” (Ans. 9, last full sentence). In addition, we
agree with the Examiner that inasmuch as Appellants have not defined any
particular structure for the claimed “separation device”, the separation
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Application 10/725,858

device of Partridge is not limited to the separation membrane but, rather,
includes the device in its entirety.
Finally, we consider the rejection of all the appealed claims under
§ 103 over Ueda in view of Waycuilis. Appellants do not dispute the
Examiner’s finding that Ueda, like Appellants, discloses a method for
supplying a fuel comprising splitting-up the fuel at a separation device into a
first fuel fraction and a second fuel fraction wherein the second fuel fraction
is in the form of a permeate that is aromatics-enriched. The Examiner
recognizes that Ueda does not teach the use of the claimed scavenging gas.
However, Waycuilis discloses the use of a separation membrane for
separating hydrocarbons, as well as the use of a scavenging or sweep gas for
providing more efficient separation, reduced membrane area and reduced
losses (see col. 8, ll. 18-29 and col. 4, ll. 25-61). Accordingly, we find no
error in the Examiner’s conclusion that it would have been obvious for one
of ordinary skill in the art to employ a scavenging gas in the separation
device of Waycuilis.
Appellants argue that Ueda discloses “a system for separating fuel
into fractions [whereas] Waycuilis, in contrast, teaches a process which
separates hydrocarbons” (Br. 6, fourth para.). However, as pointed out by
the Examiner, fuels are hydrocarbons, and we are satisfied that one of
ordinary skill in the art would have reasonably expected that the advantages
of using a scavenging gas in a hydrocarbon separation process would also
accrue to a fuel separation process.
We also find no merit in Appellants’ argument that if the system of
Ueda was provided with a scavenging gas, Ueda’s use of a high and a low
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Application 10/725,858

pressure side of a membrane would be lost (Br. 6, penultimate para.).
Waycuilis expressly teaches the following:
The introduction of sweep gas into the space within the
membrane increases the back pressure on the permeate side
of the membrane, which would normally be thought to be
counterproductive to the passage of impurities from the
hydrocarbon mixture through the membrane. In fact,
however, the dilution of the permeate gases by the sweep gas
actually reduces the partial pressure of the permeate
constituents so that the difference in partial pressure from the
feed side of the membrane to the permeate side is increased.

(Col. 4, ll. 25-34).
As for Appellants’ argument that the vacuum pump of Ueda would be
destroyed under a continuous supply of sweep gas stream, we agree with the
Examiner that Appellants’ argument is devoid of factual support and is,
therefore, of little probative value.
As a final point, with respect to the § 103 rejection, we note that
Appellants base no argument upon objective evidence of non-obviousness,
such as unexpected results.
In conclusion, the Examiner’s § 102 rejection over Waycuilis is
reversed, the § 102 rejection over Partridge is affirmed, as is the Examiner’s
§ 103 rejection. Accordingly, the Examiner’s decision rejecting the
appealed claims is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED
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