Ex Parte Gunnerman

Board of Patent Appeals and Interferences

Apr 23, 2009

11059115 (B.P.A.I. Apr. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RUDOLF W. GUNNERMAN
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Appeal 2009-2140
Application 11/059,115
Technology Center 1700
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Decided:1 April 23, 2009
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Before TERRY J. OWENS, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

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 2009-2140
Application 11/059,115

The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 5-8 and 10-13, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a process for converting components of a
petroleum or petroleum fraction feedstock to products having lower boiling
points than those of the components. Claim 1 is illustrative:
1. A process for treating a feedstock consisting of petroleum or a
fraction thereof to convert components of said feedstock to products having
boiling points that are lower than the boiling points of said components, said
method comprising:

(a) combining said feedstock with an aqueous liquid at a
(feedstock):(aqueous liquid) volume ratio of from about
20:1 to about 1:2 to form an emulsion,

(b) exposing said emulsion to ultrasound,

(c) subsequent to step (b), irradiating said emulsion with
microwave radiation to separate said emulsion into
aqueous and organic phases, and

(d) recovering said organic phase,

wherein steps (b) and (c) are performed continuously in flow-through
reactors.

The References
Wolf 4,582,629 Apr. 15, 1986
Gregoli 5,110,443 May 5, 1992

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Application 11/059,115

The Rejection
Claims 1, 5-8 and 10-13 stand rejected under 35 U.S.C. § 103 over
Gregoli in view of Wolf.2
OPINION
We affirm the Examiner’s rejection.
Except for claim 11, the Appellant argues the claims as a group (Br. 7,
Reply Br. 5-6). We therefore limit our discussion to claim 11 and one claim
in the argued group, i.e., claim 1, which is the sole independent claim. See
37 C.F.R. § 41.37(c)(1)(vii) (2007).
Claim 1
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, exposing a feedstock/aqueous
liquid emulsion to ultrasound continuously in a flow-through reactor, and
then irradiating the emulsion with microwave radiation continuously in a
flow-through reactor to separate the emulsion into aqueous and organic
phases?
Findings of Fact
Gregoli forms an oil-in-water emulsion, especially for pipeline
transmission, by mixing a hydrocarbon with water and an emulsifying agent
and heating the mixture to about 100 to about 200 °F (col. 1, ll. 25-27;
col. 2, ll. 35-40). The emulsion’s water content is about 15 to about 60 wt%

2 An obviousness-type double patenting rejection of claims 1-13 over U.S.
Application 10/803,802 is withdrawn in the Examiner’s Answer in view of
the Appellant’s filing of a terminal disclaimer on April 4, 2008 (Ans. 2).
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Application 11/059,115

(col. 2, ll. 40-45; col. 8, ll. 41-44). The emulsion can be pumped
continuously through an ultrasonic reactor at a residence time of 1 second to
several minutes to convert heavy hydrocarbons, crudes and the like into
lighter products (col. 67, ll. 38-42; col. 68, ll. 47-56). The reacted emulsion
exiting the ultrasonic reactor passes through a gas/liquid separator where
gaseous reaction products are separated from the bulk emulsion, and then
demulsifying chemicals are added to the emulsion and it is heated to 150-
300°F to break the oil/water emulsion (col. 69, ll. 1-7).
Wolf discloses “enhancing separation of oil and water emulsions and
dispersions by treating the same with microwave radiation, whether alone or
in conjunction with more conventional separating devices” (col. 1, ll. 12-15).
The “[m]icrowave treatment disrupts the emulsion and allows for more rapid
separation of the oil and water” (col. 3, ll. 6-8). “[H]ydrocarbon and water
emulsions and dispersions can be separated and the separation can be
enhanced by the application of microwave radiation in the range of from 1
millimeter to 30 centimeters for a time sufficient to separate the dispersion
or emulsion to the extent desired” (col. 2, ll. 15-20). “Normally the
microwave radiation will be used only for a short period of time, and the
emulsion or dispersion will be heated to separation temperature by
conventional means” (col. 2, ll. 21-23). “The power used will range from a
level of from about 300 to about 50,000 watts” (col. 2, ll. 42-44), and
“normally the higher the wattage used to produce the microwave radiation,
the more quickly the dispersion or emulsion can be separated” (col. 2, ll. 40-
42). Wolf’s process is effective for oil external emulsions or dispersions
containing more than 50 wt% oil, and water external emulsions or
dispersions containing about 1 to about 50 wt% oil (col. 3, ll. 15-16, 24-30).
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Application 11/059,115

The microwaves can be used either directly in a tank to generate heat and
interfacial disruption, or in a section of the flow line just ahead of the tank
(col. 3, ll. 35-40).
Analysis
The Appellant argues that Wolf’s emulsions result from mere mixing
of oil and water, and that one of ordinary skill in the art would not have
expected Wolf’s microwaves to be effective for breaking Gregoli’s
ultrasonic-treated emulsion (Br. 5; Reply Br. 4). One of ordinary skill in the
art, the Appellant argues, would have expected that Gregoli’s heating in the
presence of a demulsifying agent would be needed to break Gregoli’s
ultrasonic-treated emulsion which, the Appellant asserts, is more difficult to
break than Wolf’s emulsion. See id.
Wolf’s disclosures that the “[m]icrowave treatment disrupts the
emulsion and allows for more rapid separation of the oil and water” (col. 3,
ll. 6-8) and that the microwave treatment can be used in conjunction with
more conventional separating devices (col. 1, ll. 12-15) would have led one
of ordinary skill in the art, through no more than ordinary creativity, to use
Wolf’s microwave treatment in conjunction with Gregoli’s heating in the
presence of a demulsifying agent to disrupt the emulsion and allow for more
rapid separation of the oil and water. See KSR Int’l. Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (In making an obviousness determination one “can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ”). The Appellant’s “comprising” transition
term opens the claims to additional steps such as Gregoli’s heating in the
presence of a demulsifying agent. See In re Baxter, 656 F.2d 679, 686
(CCPA 1981). Moreover, Wolf does not indicate that the microwave
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Application 11/059,115

treatment is limited to simple oil/water mixtures such that one of ordinary
skill in the art would have expected it to be ineffective for breaking an
ultrasonic-treated emulsion, especially at Wolf’s disclosed power of
50,000 watts (col. 2, ll. 39-44). The Appellant has provided mere attorney
argument to that effect, and such argument of counsel cannot take the place
of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
The Appellant argues that although Wolf discloses that the emulsion
can be oil-external (water-in-oil), in Wolf’s examples water is the much
larger phase (oil-in-water) and, consequently, one of ordinary skill would
not have expected Wolf’s microwave treatment to be effective for Gregoli’s
water-in-oil emulsion (Br. 6).
Wolf’s disclosure that the emulsion can be oil external or water
external (col. 3, ll. 15-16 and 24-30) would have indicated to one of ordinary
skill in the art that the disclosed microwave treatment is applicable to both
water-in-oil and oil-in-water emulsions. Furthermore, in Wolf’s Example 1
the emulsion is a water-in-oil emulsion (3:7 water:oil ratio) (col. 4, ll. 15-
18).
The Appellant argues, regarding Wolf’s disclosure that “[f]or
continuous treatment, a power level of from about 1 watt to about 500 watts
per gallon of emulsion or dispersion will be used” (col. 2, ll. 46-48), that
Wolf does not describe what “continuous” means (Br. 6). The Appellant
argues that Wolf’s term “continuous” means relatively continuous or
uninterrupted treatment as opposed to intermittent treatment. See id.
Wolf does not limit the term “continuous” to relatively continuous.
The ordinary meaning of “continuous” is “marked by uninterrupted
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Application 11/059,115

extension in space, time, or sequence”.3 Hence, Wolf’s term “continuous”
appears to refer to uninterrupted microwave treatment, such as in the flow-
through reactor recited in the Appellant’s claim 1.
The Appellant argues that “[a]s shown by the use of the word ‘tank’,
Wolf refers to the use of microwaves in a line leading to a bulk reactor, not
their use in a continuous-flow reactor” (Br. 7).
Wolf discloses that the microwaves can be used either directly in a
tank or in a section of the tank’s flow line (col. 3, ll. 35-38). The disclosure
that microwaves can be used in a section of the tank’s flow line would have
indicated to one of ordinary skill in the art that emulsion is flowing through
the line and that, accordingly, when microwaves are used directly in the tank
emulsion also is flowing through the line, i.e., the tank is a continuous flow-
through reactor.
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, exposing a feedstock/aqueous
liquid emulsion to ultrasound continuously in a flow-through reactor, and
then irradiating the emulsion with microwave radiation continuously in a
flow-through reactor to separate the emulsion into aqueous and organic
phases.

3 Webster’s New Collegiate Dictionary 246 (G. & C. Merriam 1973).
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Application 11/059,115

Claim 11
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a microwave exposure time of
from about 0.1 second to about 1 second?
Analysis
The Appellant argues that a treatment time of 1 second is much
shorter than Wolf’s exemplified times of 20 and 30 seconds (Table 1, col. 4,
ll. 35-37) (Br. 7: Reply Br. 5-6).
Wolf’s disclosure is not limited to the working examples. See In re
Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982); In re Kohler, 475 F.2d
651, 653 (CCPA 1973); In re Mills, 470 F.2d 649, 651 (CCPA 1972); In re
Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Instead, all disclosures in the
reference must be evaluated for what they would have fairly suggested to
one of ordinary skill in the art. See In re Boe, 355 F.2d 961, 965 (CCPA
1966). Wolf’s disclosures that the microwave treatment is for a normally
short time sufficient to separate the emulsion or dispersion to the extent
desired (col. 2, ll. 16-22), the microwave treatment power can be as high as
50,000 watts (col. 2, ll. 42-44), and “normally the higher the wattage used to
produce the microwave radiation, the more quickly the dispersion or
emulsion can be separated” (col. 2, ll. 40-42) would have led one of ordinary
skill in the art, through no more than ordinary creativity, to use combinations
of power and time such as high power and short time (e.g., 1 second) to
separate the emulsion to the extent desired. See KSR, 550 U.S. at 418.

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Appeal 2009-2140
Application 11/059,115

Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a microwave exposure time of
from about 0.1 second to about 1 second.
DECISION/ORDER
The rejection of claims 1, 5-8 and 10-13 under 35 U.S.C. § 103 over
Gregoli in view of Wolf is affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED

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