Ex parte Morgan

Board of Patent Appeals and Interferences

Nov 30, 1999

08077599 (B.P.A.I. Nov. 30, 1999)

1 Application for patent filed June 15, 1993.
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(2) is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALLAN C. MORGAN
____________
Appeal No. 1996-1158
Application No. 08/077,5991
____________
ON BRIEF
____________
Before GARRIS, PAK and LIEBERMAN, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
refusal to allow claims 6 through 13, 22, 33, 34 and 36.
Subsequent to the final Office action, claims 13, 22, 33 and
36 were amended and claims 26-32 were canceled in the
Amendment dated May 30, 1995, Paper No. 16. Claims 12, 24, 25
Appeal No. 1996-1158
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2
and 35 stand allowable over the prior art of record, but are
objected to for depending upon a rejected claim.
According to appellant (Brief, page 5), “rejected claims
6 through 11, 13, 22, 33, 34 and 36 stand [or fall] together
in the first group.” Therefore, for purposes of this appeal,
we will limit our discussion to the broadest independent claim
on appeal, claim 33, in accordance with 37 CFR §
1.192(c)(5)(1993). Claim 33 reads as follows:
33. A process for producing carbon black comprising:
(a) forming a combustion gas stream by reacting a fuel
with a first oxidant;
(b) reacting a first carbon black yielding feedstock
with the combustion gas stream to form a reaction
stream containing a first carbon black;
(c) reacting the reaction stream of step (b),
downstream, with a second oxidant and a second
carbon black yielding feedstock to produce
additional carbon black;
(d) carrying out the process of steps (a), (b) and (c)
so that the amount of fuel utilized per pound of
carbon black produced by the process of steps (a),
(b) and (c) is less than the fuel utilized per pound
of carbon black to form the first carbon black
produced by the process of steps (a) and (b);
(e) cooling, separating and recovering the carbon black
formed by the process of steps (a) through (d).

The prior art references of record relied upon by the
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examiner are:
Kraus et al. (Kraus) 4,071,496 Jan. 31,
1978
Cheng 4,327,069 Apr. 27,
1982
Surovikin et al. (Surovikin) 4,372,936 Feb.
08, 1983
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The appealed claims stand rejected as follows:
(1) Claims 6 through 11, 22, 33, 34 and 36 under 35 U.S.C. §
103 as unpatentable over the combined disclosures of Cheng and
Kraus; and
(2) Claims 6 through 11, 13, 22, 33, 34 and 36 under 35
U.S.C.
§ 103 as unpatentable over the combined disclosures of Cheng,
Kraus and Surovikin.
We affirm.
In rejecting all of the claims on appeal under 35 U.S.C.
§ 103, the examiner has relied principally on the Cheng
reference. The Kraus reference has been relied on for the
comparative purpose, see Answer, page 3, while the Surovikin
reference has been relied on to establish obviousness of the
subject matter of claim 13, see Answer, page 4.
We find that the Cheng reference relied upon by the
examiner teaches a process for producing carbon black
comprising steps corresponding to the claimed steps (a), (b),
(c) and (e). See column 1, line 57 to column 2, line 33,
column 5 and the Figure. Specifically, the Cheng reference
states at column 1, line 57 to column 2, line 33, that:
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In accordance with a first
embodiment of this invention
therefore, a process for
producing carbon black of low
tint residue is provided. In
this process, a first flow of hot
combustion gases formed by the
combustion of a first fuel stream
and a first oxygen containing
stream is established in a first
carbon black forming zone. Into
this first carbon black forming
zone and into admixture with the
first hot combustion gases a
first stream of hydrocarbon
feedstock is introduced.
Thereby, a first carbon black
forming mixture is generated in
which at least a portion fo [sic,
of] the first stream of
hydrocarbon feedstock is
converted to carbon black. This
first carbon black forming
mixture is passed from the first
carbon black forming zone under
carbon black formation conditions
into a second carbon black
forming zone of the furnace used.
This second carbon black forming
zone is in an open connection and
fluid communication with the
first carbon black forming zone.
A second flow of hot combustion
gases formed by the combustion of
a second fuel stream and a second
oxygen containing stream is
established in the second carbon
black forming zone. A second
stream of hydrocarbon feedstock
is introduced into the second
carbon black forming zone of the
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furnace and into admixture with
the second flow of hot combustion
gases established therein as well
as with the first carbon black
forming mixture coming from the
first carbon black forming zone
of the furnace. The operating
parameters in the first and
second carbon black forming zones
are such that in one of the
carbon black forming zones which
is a high structure zone there is
formed a high structure carbon
black, whereas in the other of
the carbon black forming zones
which is a low structure zone
there is formed a low structure
carbon black. In the second
carbon black forming zone of the
furnace a second carbon black
forming mixture is generated
which is passed from this second
carbon black forming zone under
carbon black forming conditions
into a quench zone. In this
quench zone the second carbon
black forming mixture (which
contains the mass from the first
carbon black forming zone) is
contacted with a quench fluid to
produce a carbon black containing
smoke at a temperature of below
carbon black formation
conditions. Finally, the carbon
black of low tint residue is
separated from the smoke as the
product of the process. Emphasis
added.

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The Cheng reference does not mention the claimed fuel saving
recited in step (d), which reads as follows:
carrying out the process of steps (a),
(b) and (c) so that the amount of fuel
utilized per pound of carbon black produced
by the process of steps (a), (b) and (c) is
less than the fuel utilized per pound of
carbon black to form the first carbon black
produced by the process of steps (a) and
(b). . .
The dispositive question is, therefore, whether the
amount of fuel utilized per pound of carbon black produced by
the process steps (a), (b) and (c) described in the Cheng
reference is inherently less than the fuel utilized per pound
of carbon black produced by the process steps (a) and (b)
described in the Cheng reference. We answer this question in
the affirmative.
As indicated supra, the Cheng reference describes, inter
alia, process steps identical to the claimed process steps
(a), (b) and (c). These process steps, according to appellant
at pages 4 and 5 of the specification, would necessarily
result in the fuel saving recited in step (d). Specifically,
appellant states (specification, pages 4 and 5) that:
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I have discovered that it is possible to
reduce the amount of fuel utilized to produce carbon
black by reacting the reaction stream of a prior
carbon black forming process with an oxidant to
generate a stream of combustion products that will
react with carbon black yielding feedstock to
produce carbon black. The generation of this stream
of combustion products may be accomplished by
introducing any suitable oxidant, which may by any
oxygen containing material such as air, oxygen,
mixtures of air and oxygen, or other like materials
into the reaction stream. The resulting stream of
combustion products is reacted with additional
carbon black yielding feedstock to produce carbon
black. As a result, the amount of fuel utilized for
producing carbon black is reduced.
Also, we note that appellant has not disputed the examiner’s
finding that “the effluent from [the first reaction zone] of
Cheng’s process is still hot when it reaches the [second
reaction zone]. . . the claimed energy saving occurs in Cheng.
. . since no fuel is needed for [preheating]. . .”
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Given the above findings of fact, it is reasonable to
shift the burden to appellant to prove that the amount of fuel
utilized per pound of carbon black produced by Cheng’s process
steps corresponding to the claimed steps (a), (b), and (c) is
not necessarily less than the fuel utilized per pound of
carbon black produced by Cheng’s process steps corresponding
to the claimed steps (a) and (b). See In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). The fairness of
shifting of the burden is further evidenced by the U.S. Patent
and Trademark Office’s inability to carry out Cheng’s process
and compare its resulting fuel/carbon black ratios at
different carbon black forming zones. Id.
Appellant argues that Cheng does not save fuel as
required by the claimed step (d). See Brief, pages 8 and 9.
In support of his position, appellant states that Cheng
employs in its example conventional amounts of fuel in “both
carbon black forming zones” (emphasis ours). See Brief, page
9. The amounts of fuel employed, however, do not necessarily
determine the resulting fuel/carbon black ratios (which are
said to reflect fuel savings) at both carbon black forming
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zones in the process of Cheng inasmuch as the ratios in
question also are dependent on the amount of carbon black
produced. On this record, appellant simply has not pointed to
any objective evidence to demonstrate that the fuel/carbon
black ratios (fuel saving) resulting in Cheng’s process do not
necessarily result in the broadly recited fuel/carbon black
ratios recited in the claimed step (d). See Brief in its
entirety.
In view of the foregoing, we affirm the examiner’s
decision rejecting all of the claims on appeal under 35 U.S.C.
§ 103.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Appeal No. 1996-1158
Application No. 08/077,599
11
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
jrg
Appeal No. 1996-1158
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Lawrence A. Chaletsky
Cabot Corporation
Billerica Technical Center
Concord Rd.
Billerica, MA 01821