Ex parte Ross, Jr., et al.

Board of Patent Appeals and Interferences

Oct 28, 1997

08237224 (B.P.A.I. Oct. 28, 1997)

Application for patent filed May 2, 1994. According to1
appellants, this application is a continuation of Application
08/041,721 filed April 1, 1993, now abandoned; which is a
division of Application 07/756,479 filed September 9, 1991, now
abandoned.
1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOSEPH L. ROSS JR. and CHARLES SCHAUB
__________
Appeal No. 96-0037
Application 08/237,2241
__________
HEARD: Oct. 14, 1997
__________
Before ABRAMS, STAAB and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 15 through 27, which constitute all of the
claims remaining of record in the application.
Appeal No. 96-0037
Application 08/237,224
2
The appellants' invention is directed to a process for
separating fluidized cracking catalyst solids from hydrocarbon
vapors. The subject matter before us on appeal is illustrated by
reference to claim 15, which reads as follows:
15. A process for separating fluidized cracking catalyst
solids from hydrocarbon vapors comprising:
(a) feeding a mixture of fluidized cracking catalyst solids
and hydrocarbon vapors from a riser reactor into a separator
having at least one semi-circular separating area;
(b) deflecting the mixture off of a deflecting means in the
separator into said at least one semi-circular separating area;
(c) separating said mixture by inertial separation in said
at least one semi-circular separating area into a hydrocarbon
vapor product stream and a fluidized cracking catalyst stream;
(d) withdrawing said hydrocarbon vapor product stream from
said at least one semi-circular separating area through a
horizontally upwardly disposed opening on the side of a
horizontally disposed gas outlet which extends through said at
least one separating area and parallel to said deflector in said
at least one semi-circular separating area; and
(e) withdrawing the fluidized cracking catalyst from said
at least one semi-circular separating area.
THE REFERENCE
The sole reference relied upon by the examiner to support
the final rejection is:
Barnes 4,666,674 May 19, 1987
Appeal No. 96-0037
Application 08/237,224
3
THE REJECTION
Claims 15 through 27 stand rejected under 35 U.S.C. §103 as
being unpatentable over Barnes.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellants are set forth in
the Brief and the Reply Brief.
OPINION
Like the claimed invention, Barnes is directed to an
apparatus suitable for separating fluidized cracking catalyst
solids from hydrocarbon vapors. The sole point of contention
between the appellants and the examiner relates to the
orientation of the opening through which the vapor product is
withdrawn. The appellants' claims require that the hydrocarbon
vapor product stream be withdrawn through a horizontally upwardly
disposed opening (independent claims 10 and 27), or through an
opening whose boundaries are at specified angles which result in
such an orientation (independent claims 23 and 25). Insofar as
the Barnes reference is concerned, the only explicit teaching is
that the opening be "preferably located at the lower central
part" (column 3, lines 36 and 37), which is illustrated in Figure
Appeal No. 96-0037
Application 08/237,224
4
3. This difference is acknowledged by the examiner, who states
that
Barnes differs from the claimed invention in that it is
silent on the opening of the fluid outlet being
upwardly disposed (Answer, page 3).
In response to the appellants' argument that because Barnes
teaches an orientation that is opposite to that claimed it does
not provide the basis for a conclusion that the subject matter of
the claims would have been obvious, the examiner sets forth two
theories. The first is that
it would have been an obvious choice of design for one
of ordinary skill in the art to orient the gas outlet
of Barnes upwardly, instead of downwardly, because an
upwardly pointed gas outlet is functionally equivalent
to a downwardly pointed outlet when the catalyst
particle velocity is sufficiently high (Answer, page
3).
We cannot agree. First of all, the examiner has presented no
evidence that the two orientations are "functionally equivalent."
Moreover, evidence and information has been furnished by the
appellants in the specification and by way of declaration and
explanation that they are not functionally equivalent, in that
the claimed orientation provides an increase in separation
efficiency over that disclosed by Barnes (specification, pages 10
and 11; Silverman declaration; Brief, pages 7 and 8).
Appeal No. 96-0037
Application 08/237,224
5
The examiner's second theory in support of the position that
the claims would have been obvious is that
Barnes does not teach away from the claimed invention.
Barnes specifically teaches that it is preferable to
position the opening downwardly . . . . A fair reading
of Barnes suggests that locating the opening at any
other position would be a non-preferred embodiment.
It, however, does not teach against locating the
opening upwardly (Answer, paragraph bridging pages 4
and 5).
We do not agree with this rationale, either. Here, the examiner
has taken the position that since the downward orientation in
Barnes is labeled as being "preferable," one of ordinary skill in
the art would have understood that all other orientations also
are contemplated by the reference, though they are non-preferred.
The only support provided for this conclusion is the Japikse
case, which we agree with the appellants is not persuasive.
The test for obviousness is what the combined teachings of
the prior art would have suggested to one of ordinary skill in
the art (see In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981)), and in establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a
reason why one of ordinary skill in the art would have been led
to modify a prior art reference to arrive at the claimed
invention (see Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985)).
Appeal No. 96-0037
Application 08/237,224
6
The requisite motivation must stem from some teaching, suggestion
or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and not
from the appellants' disclosure (see Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed.
Cir.), cert. denied, 488 U.S. 825 (1988)). The examiner has not
met this burden. The mere fact that the prior art structure
could be modified does not make such a modification obvious
unless the prior art suggests the desirability of doing so. See
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984).
For the reasons expressed above, it is our view that the
teachings of Barnes do not establish a prima facie case of
obviousness with regard to the claimed subject matter. This
being the case, we will not sustain the rejection.
Appeal No. 96-0037
Application 08/237,224
7
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge)
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge)
Appeal No. 96-0037
Application 08/237,224
8
Alan B. Clement
Hedman, Gibson & Costigan
1185 Avenue of the Americas
New York, NY 10036