Ex Parte Buchanan et al

Board of Patent Appeals and Interferences

Jul 18, 2012

11231490 (B.P.A.I. Jul. 18, 2012)

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.
11/231,490 09/20/2005 John Scott Buchanan 2005B114 7526
23455 7590 07/19/2012
EXXONMOBIL CHEMICAL COMPANY
5200 BAYWAY DRIVE
P.O. BOX 2149
BAYTOWN, TX 77522-2149
EXAMINER
SINGH, PREM C
ART UNIT PAPER NUMBER
1771
MAIL DATE DELIVERY MODE
07/19/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOHN SCOTT BUCHANAN,
PAUL F. KEUSENKOTHEN,
STEPHEN HAROLD BROWN,
JULIAN A. WOLFENBARGER,
JAMES EARL GRAHAM,
and JAMES N. McCOY
__________

Appeal 2010-006268
Application 11/231,490
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1 and 3-25. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
The subject matter on appeal is directed to a process for cracking a high
TAN hydrocarbon feedstock. “Total Acid Number,” or “TAN,” is said to be a
measure of the naphthenic acid content of a sample. Spec., para. [0005].
According to the Appellants’ Specification, a “high TAN” hydrocarbon
feedstock has a TAN of at least about 0.5 mg KOH/g oil (ASTM D-664). See, e.g.,
Spec., para. [0060]. High TAN content in crudes or crude fractions is said to have
adverse effects on steam cracking. Spec., para. [0006]. The Appellants disclose it
would be beneficial to devise an efficient and cost-effective method of
treating/processing high TAN crudes. Spec., para. [0007].
The Appellants disclose several prior art processes which heat-soak or
chemically treat high TAN crudes to reduce TAN content. Spec., paras. [0009]-
[0013]. However, the Appellants are said to have discovered a process whereby
“high TAN crudes and high TAN refinery cuts may be directly introduced into a
steam cracker pyrolysis unit without the necessity of a heat-soak treatment and/or
without the necessity of chemical treatment, to obtain a product from the steam
cracker that is significantly reduced in TAN.” Spec., para. [0014].
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A process for cracking a high TAN hydrocarbon feedstock
comprising naphthenic acids, said high TAN hydrocarbon feedstock
selected from (i) feedstock further comprising resid and having a TAN
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of at least 0.5 mg KOH/g oil (ASTM D-664); (ii) feedstock from a
refinery pipestill having a TAN of at least 1.0 mg KOH/g oil (ASTM
D-664) and having asphaltenes substantially removed therefrom; and
(iii) mixtures thereof, said process comprising:
a. heating said high TAN hydrocarbon feedstock in the
convection section of a pyrolysis unit wherein steam is present to
produce vapor phase;
b. cracking said vapor phase in a radiant section of a
pyrolysis furnace to produce an effluent comprising olefins, said
furnace comprising a convection section and a radiant section;
with the proviso that when said feedstock comprises non-volatiles
including substantial amounts of asphaltenes, said process further
comprises passing said high TAN hydrocarbon feedstock from step
(a) through a flash drum prior to step (b).
App. Br., Claims Appendix (emphasis added).1
The following rejections are before us on appeal:
(1) the rejection of claims 1, 4-8, and 16-24 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over
Ngan2 in view of Blum3;
(2) the rejection of claims 3, 9, and 25 under 35 U.S.C. § 103(a) as
unpatentable over Ngan in view of Blum; and
(3) the rejection of claims 10-15 under 35 U.S.C. § 103(a) as unpatentable
over Ngan in view of Hallee4 and further in view of Blum.

1 Appeal Brief dated November 19, 2009.
2 US 6,632,351 B1 issued October 14, 2003.
3 US 5,820,750 issued October 13, 1998.
4 US 3,487,121 issued December 30, 1969.
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B. ISSUE
There is no dispute on this record that Ngan discloses a cracking process
comprising the steps recited in independent claims 1, 18, 22, and 25 wherein a
feedstock having an unspecified TAN content is used. See Ans. 35; App. Br. 11.
The sole point of contention is whether one of ordinary skill in the art would
have introduced a high TAN hydrocarbon feedstock directly into the convection
section of Ngan’s pyrolysis unit in view of the teachings of the prior art. The
Examiner relies on Blum’s disclosure that naphthenic acids “are found to greater or
lesser extent in virtually all crude oils” as evidence that the use of a high TAN
hydrocarbon feedstock in Ngan’s pyrolysis unit is either inherent or rendered
obvious by the teachings of Blum. Ans. 16; Blum, col. 1, ll. 17-25. In other
words, the Examiner relies on the fact that high TAN hydrocarbon feedstocks were
known in the art at the time of the Appellants’ invention to support a finding of
inherency and a conclusion of obviousness.
In response, the Appellants point out that high TAN and low TAN
hydrocarbon feedstocks were known in the art, weighing against the Examiner’s
finding of inherency. App. Br. 11, 14-15. Moreover, to the extent that Blum
discloses a high TAN hydrocarbon feedstock, the Appellants argue Blum does not
suggest using the feedstock in a cracking process.6 The Appellants argue Blum
teaches that water vapor inhibits decomposition of naphthenic acids and thus
teaches away from using a high TAN feedstock in a process where thermal

5 Examiner’s Answer dated January 22, 2010.
6 There is no dispute on this record that Blum does not disclose a cracking process.
See Ans. 14 (“Blum is not drawn to cracking of hydrocarbon feedstocks.”).
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treatment in the presence of steam is required, such as steam cracking. App. Br.
12-13.
Based on the foregoing, the dispositive issue on appeal is whether the
Examiner has demonstrated that passing or feeding a high TAN hydrocarbon
feedstock directly into the convection section of Ngan’s pyrolysis unit, as recited in
the claims on appeal, is described or rendered obvious by the prior art of record.
C. ANALYSIS
The record before us establishes that high TAN and low TAN hydrocarbon
feedstocks were known at the time of the Appellants’ invention. Thus, the mere
existence and/or knowledge of high TAN hydrocarbon feedstocks is not sufficient
to establish that the hydrocarbon feedstock described in Ngan is the high TAN
hydrocarbon feedstock described in Blum. See In re Oelrich, 666 F.2d 578, 581
(CCPA 1981). (“Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.”).
Moreover, the mere fact that high TAN hydrocarbon feedstocks were known
in the art at the time of the Appellants’ invention is not sufficient to support a
conclusion of obviousness. A case of obviousness depends on the existence of a
reason in the prior art to select a particular option, the mere existence of an option
is not enough. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“there must be
some articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)
(the mere fact that the prior art could be modified as proposed by the Examiner is
not sufficient to establish that the modification would have been obvious to one of
ordinary skill in the art).
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The Examiner does not rely on Hallee to cure the deficiencies discussed
above. Therefore, the rejections on appeal are reversed.
D. DECISION
The decision of the Examiner is reversed.

REVERSED

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