PAN ASIAN CHEMICALS INC.

Patent Trials and Appeals Board

Oct 5, 2021

2020004926 (P.T.A.B. Oct. 5, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/649,071 06/02/2015 James D. Wrubel PACI-002US 8699
60935 7590 10/05/2021
Edmonds & Cmaidalka, P.C.
16850 Diana Lane
Suite 102
Houston, TX 77058
EXAMINER
KEYWORTH, PETER
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
10/05/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@edmondsiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES D. WRUBEL
____________

Appeal 2020-004926
Application 14/649,071
Technology Center 1700
____________

Before LINDA M. GAUDETTE, GEORGE C. BEST, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–14, 16, and 21–24.2,3 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the inventor, James D. Wrubel, as the real party in
interest. Appeal Brief filed January 21, 2020 (“Appeal Br.”), 4.
2 Final Office Action entered January 17, 2019 (“Final Act.”), 1.
3 Claims 17 and 18 have been withdrawn from consideration. Although
Appellant attempted to cancel claims 2, 3, 14, 16–18, 22, and 24 in an
amendment filed February 6, 2019, the Examiner indicated in an Advisory
Action issued February 19, 2019 that the amendments would not be entered.
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CLAIMED SUBJECT MATTER
Appellant claims a method for purifying an aqueous mixture derived
from a hydrocarbon process. Appeal Br. 6–7. Claim 1 illustrates the subject
matter on appeal, and reads as follows:
1. A method for purifying an aqueous mixture derived from
a hydrocarbon process, comprising:
deriving a hydrocarbon process stream comprising
water, hydrocarbon and one or more contaminants from
a hydrocarbon process;
at least partially crystallizing an aqueous mixture
consisting of the hydrocarbon process stream derived
from the hydrocarbon process by cooling the aqueous
mixture to at least one eutectic temperature of the
aqueous mixture to provide an at least partially
crystallized aqueous mixture that comprises a mother
liquor, ice, the hydrocarbon, and the one or more
contaminants;
separating the at least partially crystallized
aqueous mixture into a contaminant-rich fraction
comprising the hydrocarbon and the one or more
contaminants and a water-rich fraction;
recovering the water from the water-rich fraction;
and
recovering the one or more contaminants from the
contaminant-rich fraction.
Appeal Br. 34 (Claims Appendix).
Like claim 1, the remaining independent claim on appeal—claim 14—
recites, in part, a method for purifying an aqueous mixture derived from a
hydrocarbon process, comprising deriving a hydrocarbon process stream
comprising water, hydrocarbon, and one or more contaminants from a
hydrocarbon process, and at least partially crystallizing an aqueous mixture
consisting of the hydrocarbon process stream by cooling the aqueous
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mixture to at least one eutectic temperature of the mixture. Appeal Br. 35–
36 (Claims Appendix).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered April 17, 2020 (“Ans.”):
I. Claims 1–3, 7–14, 16, and 21–24 under 35 U.S.C. § 103(a) as
unpatentable over Witkamp (US 2004/0060322 A1, published April 1, 2004)
in view of Xia (US 2012/0097609 A1, published April 26, 2012) and Fan
(US 2013/0331524 A1, published December 12, 2013); and
II. Claims 4–6 under 35 U.S.C. § 103(a) as unpatentable over
Witkamp in view of Xia, Fan, and Sengupta (US 2012/0234765 A1,
published Sepember 20, 2012).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejections of
claims 1–14, 16, and 21–24 under 35 U.S.C. § 103(a) for reasons set forth in
the Appeal and Reply Briefs, and below.
The Examiner finds that Witkamp discloses a method for purifying an
aqueous mixture that involves at least partially crystallizing an aqueous
mixture consisting of organic material and one or more contaminants in a
cooling disk column crystallizer, which “separates the fractions via density
by cooling to a eutectic freezing point [EFP],” to form ice “along with a
mother liquor.” Final Act. 4 (citing Witkamp ¶¶ 21–49; Figs. 2 and 3). The
Examiner finds that “Witkamp teaches EFP can be used to treat a broad
spectrum of waste streams,” including those containing manure, “but fails to
teach the stream being treated via the crystallizing as [sic: is] a hydrocarbon
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process stream derived from a hydrocarbon process.” Ans. 4; Final Act. 4.
The Examiner explains that “Fan is used to show that [the] specific organic
material mentioned in Witkamp (manure) would contain hydrocarbon
material.” Ans. 4; see also Final Act. 4 (citing Fan ¶ 22).
The Examiner further finds that Xia discloses a method of purifying a
process stream “from oil tar sands,” which the Examiner determines “would
be considered a hydrocarbon process stream,” involving at least partially
crystallizing an aqueous mixture comprising hydrocarbons and one or more
contaminants, to cause “crystallization of hydrocarbon (organic material)
and salts and a separate stream of water and solvent.” Final Act. 4–5 (citing
Xia ¶¶ 3, 19, 21, 30, 31, 44); Ans. 3–4.
The Examiner concludes that “[s]ince one skilled in the art would
recognize the organic material in Witkamp to be a hydrocarbon containing
stream, it would have been obvious to apply the same method to other
hydrocarbon process streams that have the same composition of
hydrocarbons, water and other contaminants, such as salts, in order to
crystallize contaminants and remove the organic material/hydrocarbons to
produce a clean water stream as it is merely applying a known process to a
different stream with a similar composition.” Final Act. 5.
On the record before us, however, the Examiner does not provide a
sufficient factual basis to establish that a combination of the relied-upon
disclosures of Witkamp, Fan, and Xia would have suggested at least partially
crystallizing an aqueous mixture consisting of a hydrocarbon process stream
derived from a hydrocarbon process by cooling the aqueous mixture to at
least one eutectic temperature of the mixture, as required by independent
claims 1 and 14, for reasons expressed by Appellant and discussed below.
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The Examiner’s conclusion of obviousness is premised on a de facto
finding that the waste stream containing “organic material” disclosed in
Witkamp has a “similar” composition to the oil tar sands-derived process
stream disclosed in Xia. Final Act. 5. To the contrary, however, the
compositions of the process streams disclosed in Witkamp and Xia differ
significantly.
Witkamp discloses eutectic crystallization of salts, acids, and/or bases
from aqueous process streams containing “organic contaminants” to produce
pure water, pure salt, acid, and/or base crystals, and “a small stream
containing organic material.” Witkamp ¶¶ 1, 21, 23. Witkamp explains that
“[b]ecause of the very high selectivity of salt and ice crystallization,” during
freeze crystallization at a eutectic freezing point, “organic material will
remain in the liquor.” Witkamp ¶ 29.
Witkamp defines “organic material” as “organic material that should
not be present in the crystalline material, as it decreases the value thereof.”
Witkamp ¶ 12. Witkamp discloses that exemplary aqueous process streams
containing organic contaminants include “the by-products obtained in acid
(or base) catalysed chemical reactions, the waste stream obtained from
processing of agricultural products (fermentation, sugar production, cheese
production), the scrubbing of exhaust air from cattle growing, a liquid phase
derived from manure processing and the like.” Witkamp ¶ 4. Witkamp
further discloses that “[a]queous agricultural waste streams suitable for use
in the present process include molasses, vinasse and potato chick juice.”
Witkamp ¶ 5.
In contrast, Xia discloses a method and system for treatment of
aqueous oily solutions, including wastewater from steam-assisted gravity
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drainage. Xia ¶¶ 1, 5. Xia explains that “[s]team assisted gravity drainage
(SAGD) is one technology for oil sands extraction and heavy oil recovery,”
and “[t]he wastewater produced in SAGD process contains large amount of
salts, oil and grease.” Xia ¶ 3. Xia’s method involves combining an
aqueous oily solution with a miscible organic solvent in a precipitation
device under conditions in which species dissolved in the aqueous oily
solution, such as salts, precipitate to form a mixture of precipitated solids
and a liquid phase. Xia ¶¶ 8, 19, 20. Xia explains that “[i]n the precipitation
device, at least a portion of the oily substances contained in the aqueous oily
solution are dissolved by the miscible organic solvent and become one part
of the liquid phase, and thus the precipitated solids can be efficiently spilt
from the portion of oily substances by a solid-liquid separation and become
dry solids.” Xia ¶ 22 (reference numerals omitted); see also ¶ 36 (“the
precipitated solids also separate from the at least a portion of oily
substances”) (reference numerals omitted).
Xia’s method further involves separating the liquid phase into an
aqueous phase and an organic phase. Xia ¶ 26. Xia discloses that “the
organic phase contains the oily substances,” and Xia discloses removing the
oily substances from the organic phase and also removing oily substances
“that may be contained in the aqueous phase.” Xia ¶¶ 28, 30.
Although, as discussed above, the Examiner finds that the process
streams disclosed in Witkamp and Xia “have the same composition of
hydrocarbons, water and other contaminants, such as salts,” the Examiner
does not seem to consider the “large amount of . . . oil and grease” present in
Xia’s aqueous oily process stream. On the record before us, we find no
indication that large amounts of oil and grease are present in the process
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streams disclosed in Witkamp, making such process streams fundamentally
different in composition from Xia’s aqueous oily process stream.
As discussed above, the large amount of oily substances present in the
process stream treated with Xia’s method necessitate combining the stream
with a miscible organic solvent to dissolve the oily substances, permitting
separation of precipitated solids from the oily substances. In contrast,
Witkamp’s method does not involve combining a process stream with an
organic solvent, and Witkamp makes no mention of the effectiveness of
Witkamp’s method for treating process streams that contain large amounts
of oil and grease.
Appellant argues that “Xia simply does not disclose or suggest, nor
provide any expectation of success, for treating an aqueous oily solution by
EFC, and certainly not without the addition of a miscible organic solvent.”
Appeal Br. 19. In response, the Examiner states that “[w]hile Xia does
discuss the use of a solvent to dissolve at least a portion of the
hydrocarbons/oily substance,” Xia also explicitly “teach[es] that
hydrocarbons/oily material is separated with the crystallized/precipitated
solids from the water stream.” Ans. 5–6 (citing Xia ¶ 44).
The Examiner appears to assert that Xia’s method involves separating
oily substances from water together with, or in combination with,
crystallized/precipitated solids. As discussed above, however, Xia discloses
that “the precipitated solids can be efficiently split from the portion of oily
substances by a solid-liquid separation and become dry solids” by dissolving
the oily substances in a miscible organic solvent. Xia ¶ 22 (reference
numerals omitted); see also ¶ 36 (“the precipitated solids also separate from
the at least a portion of oily substances” (reference numerals omitted)).
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Paragraph 44 of Xia cited by the Examiner also includes this teaching,
although the language used in this paragraph is somewhat unclear when the
paragraph is considered in isolation. Specifically, paragraph 44 states that
“[a]t least a portion of oily substances are dissolved by the one or more
miscible organic solvents and become a part of the liquid phase, thus the
precipitated solids can also be separated with some of the oily substances
and form dry precipitated solids.” Paragraphs 22 and 36 describe the same
process discussed in Paragraph 44, and when considered together, the three
paragraphs indicate that Xia’s method separates precipitated solids from oily
substances by dissolving at least a portion of the oily substances in an
organic solvent. As discussed above, Xia further teaches removing oily
substances that may be present in the aqueous phase.
On the record before us, the Examiner does not provide reasoning
having rational underpinning that explains why one of ordinary skill in the
art reasonably would have expected that an aqueous oily process stream as
disclosed in Xia could be effectively treated using Witkamp’s method. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The mere fact that the prior
art could be so modified would not have made the modification obvious
unless the prior art suggested the desirability of the modification.”). The
Examiner, therefore, does not establish that one of ordinary skill in the art
would have been led to utilize Witkamp’s method to treat an aqueous oily
process stream as disclosed in Xia with a reasonable expectation of
successfully recovering crystallized salts from the solution.
We, accordingly, do not sustain the Examiner’s rejections of claims
1–14, 16, and 21–24 under 35 U.S.C. § 103(a).

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DECISION SUMMARY

Claim(s)
Rejected

35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–3, 7–14,
16, 21–24
103(a) Witkamp, Xia,
Fan
1–3, 7–14,
16, 21–24
4–6 103(a) Witkamp, Xia,
Fan, Sengupta
4–6
Overall
Outcome
1–14, 16,
21–24

REVERSED